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austlii:cth/APO/2012/68
appellant. Patent application 2009230789 refused under s 49(2) of the Patents Act 1990 (Cth).
This decision concerns a patent application that was refused because the applicant failed to respond to examination objections. The application was a 'divisional' application (related to an earlier parent application). The Patent Office had raised the same objections that had been raised in the parent application and gave the applicant two months to respond, warning that failure to respond could lead to refusal. When no response was received, the Patent Office issued a hearing notice giving the applicant one month to provide written submissions. The applicant provided no submissions and no amendments to address the objections. The hearing officer found that because the applicant had not defended the application or attempted to overcome the objections, there was no reasonable prospect of success, and refused the application under section 49(2) of the Patents Act.
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Title: Nucleic acid and corresponding protein entitled 98P4B6 useful in treatment and detection of cancer
Patent application 2009230789 was filed by Agensys, Inc. as a divisional of application 2003223469 on 27 October 2009. An examination report issued on 25 January 2012, raising six objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:
"Objection(s) 1-6 of my report are based on the same grounds objected to in the examination of patent applications 2003223469. 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 25 January 2012 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."
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.
Patent application 2009230789 refused under s 49(2) of the Patents Act 1990 (Cth).