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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth [2011] APO 25

Patent Application: 2009201746

Title:[(2-(amino-3,4-dioxo-1-cyclobuten-1-yl)amino]alkyl]-acid derivatives for the treatment of pain

Patent Applicant: Wyeth

Delegate: Dr S.D.Barker

Decision Date: 20 April 2011

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

Representation: Patent applicant: Phillips Ormone Fitzpatrick

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009201746

Title:[(2-(amino-3,4-dioxo-1-cyclobuten-1-yl)amino]alkyl]-acid derivatives for the treatment of pain

Patent Applicant: Wyeth

Date of Decision: 20 April 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009201746 was filed by Wyeth as a divisional of application 2002353792 on 1 May 2009. An examination report issued on 8 December 2010, raising six objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection(s) 2 and 3 of my report are based on the same grounds objected to in the examination of patent application AU 2002353792. 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 8 December 2010 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.

Dr S.D.Barker
Delegate of the Commissioner of Patents

Wyeth, the applicant, sought a patent for a novel chemical compound designed for pain treatment. The application was a divisional application of an earlier patent application, AU 2002353792. Following the examination of the initial application, objections were raised, leading to the issuance of an examination report for the divisional application. The objections in the divisional application were based on similar grounds to those objected to in the earlier application. Despite being notified of the objections and the potential consequences of not responding, Wyeth did not provide any submissions or proposed amendments to address the objections. Consequently, the delegate, Dr. S.D. Barker, was tasked with deciding whether to refuse the application or direct amendment.

The central legal issue for the delegate was to determine whether the patent application should be refused or if there were reasonable prospects of the applicant overcoming the objections raised in the examination report. Given that the applicant had not responded to the objections, the delegate had to assess whether there were grounds for proceeding with the application or whether it should be refused. The Commissioner's approach to case management of divisional applications also played a role in this decision, as it mandated that if a response overcoming the objections was not filed within a specified period, the application could be refused.

Dr. S.D. Barker, the delegate, reviewed the examiner's report and found the objections to be appropriately raised. Wyeth's decision not to defend the application, coupled with the absence of submissions or proposed amendments, led the delegate to conclude that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application was refused. The delegate noted that Wyeth had ample opportunity to address the objections but chose not to do so, thereby leading to the refusal of the patent application.

The final orders of the delegate were to refuse the patent application 2009201746 due to the applicant's failure to respond to the objections raised in the examination report and the absence of any reasonable prospects of overcoming the objections. This decision underscores the importance of timely and substantive responses to objections in patent applications to maintain the viability of the application.

Wyeth

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