Singapore, Mar 26, 2009: Australian medical devices company, Benitec was notified that the US Patent and Trademark Office (USPTO) has issued an Advisory Action indicating that the amendments, arguments and evidence proposed by Benitec and CSIRO with regards to the '099 Graham patent will not be entered on procedural grounds.

According to the company, the advisory action does not substantively address the extensive arguments presented in support of patentability, does not substantively address evidence in the form of a declaration from a technical expert and provides no explanation for why the proposed amendments would not place the application in condition for allowance.

The company believes this to be improper and intends to seek recourse initially within the USPTO and will receive further advice on other available options before ultimately deciding whether to proceed with an appeal if necessary. The company also believes that if they receive recourse within the USPTO, the re-examination process will continue taking into account our latest amendments, arguments and evidence.

“Benitec and CSIRO remain committed to the ‘099 Graham patent. Moreover, the ‘099 patent is only one member of a family and Benitec and CSIRO are also entitled to seek additional protection to the subject matter claimed in the ‘099 patent, subject to double-patenting laws, in pending US continuation applications. These applications are not subject to all of the restrictions as apply to the ‘099 re-examination. Benitec and CSIRO are continuing to obtain specialist advice on how best to further develop the patent portfolio. This “backward and forwarding” between the patent office and the patent owner is usual in high profile IP cases,” said Benitec CEO, Ms Sue MacLeman.

Benitec was previously notified on November 21, 2008 that a Final Office Action had been issued by the USPTO. Representatives of Benitec and CSIRO have subsequently met with the examiners in mid February over the remaining re-examination issues. A response was then lodged with the USPTO on February 26, 2009.

Benitec and its partner CSIRO may take this matter to appeal with the USPTO board if necessary. If the matter proceeds to an Oral Hearing before the Board of Appeal, this would be expected towards the end of 2009/ early 2010 due to the backlog of Appeals.