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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth[2011] APO 47

Patent Application: 2009222567

Title:Substituted Phenyl Naphthalenes as Estrogenic Agents

Patent Applicant: Wyeth

Delegate: E J Knock

Decision Date: 29 June 2011

Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: Graham Cowin of Phillips Ormonde Fitzpatrick, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009222567

Title:Substituted Phenyl Naphthalenes as Estrogenic Agents

Patent Applicant: Wyeth

Date of Decision: 29 June 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009222567 was filed by Wyeth as a divisional of application 2002361659 on 6 October 2009. An examination report issued on 15 February 2011, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 3 and 4 of my report are based on the same grounds objected to in the examination of patent application AU 2002/361659. Please note that if a response overcoming those objections is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 15 February 2011 raised an objection(s) equivalent to that in the parent application. In line with our approach to case management of divisionals, you were given two months to respond to that report. As no response has been received, the matter will now be set for hearing.
I believe that it is possible to hear this matter on the basis of written submissions, so I allow you one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) of objection identified in the examination report. Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision. Please note that it is possible for the Commissioner to refuse the application or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."

The applicant has not provided any submissions.

The objection

I have reviewed the examiner's report, and I agree that there are appropriately raised objections. The applicant has chosen not to defend the application. They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections. In these circumstances there are no reasonable prospects of the applicant overcoming the objections. The application should be refused.

E J Knock
Delegate of the Commissioner of Patents

Wyeth, a pharmaceutical company, filed patent application 2009222567 for substituted phenyl naphthalenes as estrogenic agents. The application was a divisional of an earlier application, 2002361659. An examination report issued on 15 February 2011 raised five objections to the patent application. As the application was a divisional of an earlier application, the Commissioner followed a specific approach in managing the case, which included giving the applicant two months to respond to the objections. The Commissioner warned that if the applicant failed to respond, the application might be refused or directed to be amended. Despite the deadline for a response passing without any communication from Wyeth, the Commissioner allowed an additional month for the applicant to submit written arguments or amendments. However, Wyeth did not provide any submissions or amendments to address the objections, leading the Commissioner to conclude that there were no reasonable prospects of overcoming the objections.

The primary legal issue in this case was whether the patent application could be refused due to the applicant's failure to respond to the objections raised in the examination report and the Commissioner's warning. The Commissioner's approach to managing divisional applications was also relevant, as it required the applicant to respond to objections in a timely manner or face potential refusal of the application. Additionally, the Commissioner had the discretion to refuse the application or direct amendment if the applicant failed to address the objections.

The Commissioner reviewed the examination report and found that the objections were appropriately raised. Wyeth had not provided any submissions or amendments to address the objections, and the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the Commissioner decided to refuse the patent application. The Commissioner's decision was based on the applicant's failure to respond to the objections, the Commissioner's approach to managing divisional applications, and the lack of any reasonable prospects of overcoming the objections.

The Commissioner refused the patent application, and the decision was final. No further action could be taken by the applicant to overcome the objections or appeal the decision. The patent application was considered invalid, and the substituted phenyl naphthalenes as estrogenic agents would not be protected by a patent in Australia.

Wyeth

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