Yeda Research and Development Co Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Yeda Research and Development Co Ltd [2012] APO 36

Patent Application: 2011201152
Title:Splice variants of ErbB ligands, compositions and uses thereof

Patent Applicant: Yeda Research and Development Co Ltd

Delegate: E J Knock

Decision Date: 22 March 2012

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

Representation: Patent applicant: Karen Bentley, Freehills, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011201152

Title:Splice variants of ErbB ligands, compositions and uses thereof

Patent Applicant: Yeda Research and Development Co Ltd

Date of Decision: 22 March 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011201152 was filed by Yeda Research and Development Co Ltd as a divisional of application 2004265512 on 15 March 2011. An examination report issued on 8 November 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2004265512. Please note that if a response overcoming this objection 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 you intend 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 November 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

In the case of Yeda Research and Development Co Ltd, the applicant sought a patent for "Splice variants of ErbB ligands, compositions and uses thereof". The patent application, number 2011201152, was filed as a divisional of application 2004265512 on 15 March 2011. The application was examined by the Australian Patent Office and an examination report was issued on 8 November 2011, raising two objections. The applicant was given two months to respond to the examination report, but failed to provide any submissions or amendments. As a result, the Commissioner issued a hearing notice allowing the applicant one month to file any submissions addressing the grounds of objection identified in the examination report.

The legal issues before the court were whether the objections raised in the examination report were appropriately raised, and if the applicant had any reasonable prospect of overcoming those objections. The applicant chose not to defend the application, provide any submissions disputing the objections, or propose any amendments to overcome the objections. The court found that the objections were appropriately raised and that the applicant had no reasonable prospects of overcoming the objections.

In accordance with the Commissioner's approach to case management of divisionals, the court found that the application should be refused. The court noted that the applicant had not provided any submissions or amendments to address the objections, and that it was not possible to hear the matter on the basis of written submissions alone. The court concluded that the application should be refused as there were no reasonable prospects of the applicant overcoming the objections.

The final orders of the court were that the patent application 2011201152 be refused. The applicant was given notice of the decision and the reasons for the decision were provided in writing. The applicant had the right to appeal the decision to the Federal Court of Australia.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established