Biosimilars Deals 2021

Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd (No 3) [2025] FCA 1179

Introduction

Justice Jackman of the Federal Court has handed down judgment in proceedings between Abbey Laboratories Pty Ltd. (Abbey) and Virbac Australia Pty Ltd (Virbac), in a dispute concerning Virbac’s patent for a veterinary topical pour-on formulation for cattle containing macrocyclic lactone and levamisole.  Justice Jackman found that the majority of the patent’s claims were valid and infringed by Abbey, while three claims concerning viscosity modifiers were found invalid for lack of inventive step.

Background

The patent, AU2012227241 entitled “Veterinary Topical Formulation” with a priority date of 23 September 2011 (the 241 Patent), relates to anthelmintic formulations for treating parasitic infections in cattle.  Anthelmintics are products used to treat parasites in livestock, an important aspect of modern livestock farming.

The specification identifies five major classes of broad spectrum anthelmintic.  Of these, macrocyclic lactones, introduced in the 1980s, are described as the most potent killers of worms with a unique quality of also killing external parasites such as lice, mites and ticks.  The 241 Patent addresses the challenge of formulating a stable combination of macrocyclic lactones and levamisole in a pour-on formulation, which is ordinarily difficult given their different physicochemical properties.  The invention claimed stable formulations using specific non-aqueous solvents, namely dimethyl acetamide (DMA), dimethyl isosorbide (DMI), diethyl phthalate (DEP) and dimethyl phthalate (DMP).

Abbey commenced revocation proceedings in May 2024 and subsequently launched its competing product, Levamox Duo, in January 2025,  after an interlocutory injunction was refused in December 2024 on balance of convenience grounds.  Virbac cross-claimed for infringement.  There was no dispute that if the Patent was valid, Abbey had infringed by offering to sell and supplying Levamox Duo in Australia.

Key Issues and Consideration

Inventive Step

Abbey challenged claims 1-10, 13, 15, 16, 18-21 on lack of inventive step.  Claim 1 is as follows (with integers identified):

1.1    A stable formulation including

1.1(a)   a levamisole active ingredient and

1.1(b)   at least one active selected from the group known as macrocyclic lactones

1.2    with both of said actives being dissolved in a non-aqueous system, including solvents selected from DMA, DMI, DEP and DMP

1.3    wherein the formulation is a topical formulation for administration

1.4    to cattle

Abbey had initially also challenged claims 11 and 12 (relating to additional anthelmintics such as triclabendazole), but abandoned that challenge.

Abbey’s inventive step challenge focused on two key propositions: that a person skilled in the art (PSA), would obviously adopt a non-aqueous solvent system, and that the PSA would select one of the four specified solvents.  Both these challenges failed.

Abbey’s expert, Dr Alawi (a pharmaceutical formulator with extensive experience in the animal health industry, including as co-inventor on competing patents), gave evidence that using a non-aqueous system was “the usual approach” for dissolving lipophilic molecules and that including water would be “unusual and a waste of time”.  However, Justice Jackman found that Dr Alawi’s evidence was based on his own specialised research experience rather than the common general knowledge.  Critically, Dr Alawi’s position was contradicted by his own prior conduct.  In developing the invention the subject of New Zealand patent NZ 20060552040 (the 040 Patent), Dr Alawi had tested twelve aqueous formulations combining abamectin and levamisole.  More significantly, for another patent in the same field filed just three months before the 241 Patent’s priority date, Dr Alawi had trialled over forty formulations with eleven out of thirteen test formulations using water and various salt forms of levamisole.

Justice Jackman accepted evidence from Virbac’s expert, Professor Bunt, that a PSA would not exclude water from consideration without first testing.  Professor Bunt explained that water and water-based solvents are generally safer on animals, easier to formulate and less expensive than organic solvents.  Professor Bunt considered that he would have begun testing levamisole’s solubility in water across different pH values, prioritising the salt form of levamisole as salts are the most water-soluble form of a compound.  Dr Alawi admitted in cross-examination that someone who had not conducted his research program would say: “Okay. Let’s try the water” and “let’s try the levamisole … hydrochloride format”.

The Court also considered whether the PSA would have selected any of the four solvents specified in claim 1 (namely, DMA, DMI, DEP and DMP).  Database search evidence relied upon by Virbac showed that DMI, DEP and DMP were not used in any veterinary product at the priority date, and DMA appeared in only one product.

Professor Bunt gave evidence that DMA would have been an unlikely choice due to its known skin irritancy, distinct unpleasant odour, being water-miscible and quite fluid, causing run-off concerns, links to reproductive and developmental toxicity, flammability concerns, and potential regulatory difficulties given its limited prior use in veterinary products.

As to DMI, Professor Bunt had never used it, did not keep it in his ‘library’ of solvents, was not aware of others using it for veterinary formulations, and noted concerns about regulatory approval and cost.  Dr Alawi had not used DMI in any of his prior research work for various patents, explaining he included it in his solvent list as a “back up”.  The Court rejected this explanation, finding the most plausible explanation was that Dr Alawi’s awareness of Virbac’s Cydectin Platinum product led him to include DMI in his list.

As to the phthalates (DEP and DMP), Dr Alawi had not used them in his work for the 040 Patent but listed them as a “back up”.  Neither Dr Alawi, Dr Agnew nor the database search evidence identified any veterinary products using phthalates.  Professor Bunt said it had never been his preference to consider a phthalate when other materials could function just as well.

Justice Jackman accepted Professor Bunt’s list of preferred solvents for the hypothetical task, which in order of preference were: water, PEGs; propylene glycol; glycerol formal; ethanol; benzyl alcohol; methyl ethyl ketone; and NMP – none of which were the solvents listed in claim 1.

Accordingly, his Honour held that it was not obvious that the PSA would adopt a non-aqueous solvent system, nor would the PSA select any of the four solvents listed in claim 1.  Abbey’s inventive step challenge to claim 1 and its dependent claims (claims 2-10, 13, 15) therefore failed.

As to the independent claim 16 (a method of preparation claim requiring dissolving actives in at least one of DMI, DMA, DEP or DMP), as the selection of those solvents was not obvious, his Honour also found this claim to be inventive.

However, claim 19 (a solvent-based topical formulation containing a macrocyclic lactone and levamisole in organic solvents with a viscosity modifier) did not require the use of DMI, DMA, DEP or DMP, but merely the use of one or more organic solvents together with a viscosity modifier.  Professor Bunt’s choice of potential solvents included a number of organic solvents, and his Honour considered that there was nothing inventive about the use of organic solvents in this kind of formulation.  The addition of viscosity modifiers was also common practice within the industry as at the priority date of the 241 Patent – 23 September 2011.  Justice Jackman consequently found claim 19 lacked an inventive step and was invalid.  Claims 20 and 21, being dependant on claim 19, and merely stipulating the concentration and type of viscosity modifier, were also invalid.

Abbey also relied on three pieces of prior art information in its inventive step challenge.  However, his Honour found these documents did not indicate that the development of an anthelmintic combination formulation for cattle should only use a non-aqueous system, nor did they identify any of the solvents specifically nominated in the 241 Patent for pour-on formulations.

Novelty

Abbey relied on a “whole of contents” novelty objection based on Australian patent AU2011234984 (the 984 Patent), directed to compositions comprising four different active agents (1–arylpyrazole, a macrocyclic lactone, an insect growth regulator, and an anthelmintic) for treating parasites.

A preliminary issue arose as to whether Abbey needed to formulate a set of “notional claims” to establish anticipation.  Since EI Du Pont de Nemours and Co v ICI Chemicals & Polymers Ltd [2005] FCA 892; (2005) 66 IPR 462 (Du Pont), it had been understood that a “whole of contents” objection required formulating notional claims that would be fairly based on the prior disclosure.

Justice Jackman declined to follow Du Pont, stating that its reasoning was “wrong”.  The statutory language – “if the information … were to be, the subject of a claim” – does not require information to actually be drafted as a claim.  The legislative history showed the “whole of contents” approach was introduced in response to the Industrial Property Advisory Committee’s recommendation to replace the “unsatisfactory” and “too narrow” prior claiming approach with a “simpler mechanism”.  Requiring notional claims would “re-re-route Australian patent law back towards something resembling prior claiming … but in an even more obscure form”.

His Honour also observed that, when considering whether to depart from earlier single judge decisions, a Judge should not approach such a task through the lens of “judicial comity”, a term which “creates the unfortunate impression that judges should give priority to questions of courtesy and politeness to each other over their duty to apply the law as properly understood”.  Instead, the question is whether there is a “compelling reason” to depart, rather than whether the earlier decision was “plainly” or “clearly” wrong.

Comparison with the 984 Patent

Turning to the comparison between the 241 Patent and the 984 Patent, Justice Jackman found there was no “clear and unmistakable direction” in the 984 Patent to make any formulation within the claims of the 241 Patent.  The 984 Patent required four active ingredients (whereas the Patent required two); listed levamisole as merely one of sixteen possible anthelmintic options; expressly encompassed aqueous formulations (the 241 Patent required non-aqueous); and listed DMA and DMI among over 25 solvents without preference or specific combination with levamisole.  Abbey’s approach of finding isolated references to individual claim features in different parts of the 984 Patent was rejected as failing to anticipate the specific combinations claimed.

Ferrocom Inferences

Abbey submitted that adverse inferences should be drawn under Commercial Union Assurance Company of Australia Ltd v Ferrcom Pty Ltd (1991) 22 NSWLR 389 (Ferrcom) from matters Virbac’s expert, Professor Bunt, had not addressed in evidence in chief – specifically, the obviousness of the solvent concentration ranges in claim 2.  Justice Jackman rejected this as “misplaced” as Professor Bunt had already explained that he would not have selected the relevant solvents in the first place, so there was no need for him to address the concentration ranges of solvents he would not have chosen.

More fundamentally, his Honour held that there would “rarely (if ever)” be scope for such an inference in contemporary expert evidence practice, given the requirement for expert conferences, joint reports, and declarations that all appropriate inquiries have been made.  These safeguards mean “contemporary practice thus does not leave any effective room for a party tactically to seek to ensure that certain subject matter is avoided by an expert witness”.

Outcome and Implications

Justice Jackman found that Abbey had infringed claims 1-10, 13, 15, 16 and 18, and granted an injunction preventing the sale of Levamox Duo, with an inquiry on costs to follow.  His Honour found claims 19-21 invalid.  Abbey has subsequently appealed the decision.

Justice Jackson’s decision demonstrates the importance of ensuring that an expert’s opinion on the issue of inventive step is based on the CGK and not knowledge specific to that particular expert which is not representative of the CGK. His Honour’s judgment also illustrates the power of prior patents and publications to corroborate or dispute the approach which PSAs would have taken to research around the time of the priority date.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.

Introduction

The Australian Patent Office (APO) upheld an opposition by Nuseed Pty Ltd and Norddeutsche Pflanzenzucht Hans Georg Lembke KG against Limagrain Europe’s Australian patent application number 2016307234 (the Application) relating to Brassica (canola) plants with pod shattering tolerance.  The Delegate found multiple grounds of opposition successful, namely, certain claims lacked novelty in view of prior use, certain claims lacked inventive step, and all claims lacked sufficiency and support across their full scope.

Limagrain Europe was given two months to propose amendments to remedy the deficiencies and has since filed a request to amend the claims of the application, which is currently being processed by IP Australia.

Background

Australian patent application 2016307234, entitled ‘Brassica plant with pod shattering tolerance’, generally relates to the field of breeding oilseed rape (Brassica napus), which is more commonly known in Australia as canola.  Traditional breeding has focused on reducing harmful seed components (erucic acid and glucosinolates) and improving yield through hybrid vigour.  Canola breeding commonly uses male sterility systems to control pollination, including the Ogura cytoplasmic male sterility (CMS) system from radish (Raphanus sativus), along with its corresponding restorer (Rf) gene.  Introgression of this radish genetic material unexpectedly improved pod shatter resistance, but also caused undesirable traits such as higher glucosinolate levels and lower yield.  Because the genetic mechanisms behind these traits were unclear, the invention aims to provide canola plants with a shortened Raphanus introgression that maintains fertility restoration and pod shatter resistance, while minimising negative traits.  It also discloses SNP (single nucleotide polymorphism) markers to detect the presence or absence of the relevant introgressed regions.  The application is accompanied by a deposit, made under the provision of the Budapest Treaty, of seeds of the B. Napus line R42141F at the National Collections of Industrial, Food and Marine Bacteria in Aberdeen, Scotland.

The application included 27 claims at acceptance, summarised as follows:

• Claims 1 – 11 directed to Brassica plants comprising a Raphanus genomic fragment conferring pod shatter tolerance (POSH+) characterised by the absence of at least one Raphanus SNP within SEQ ID Nos 4–18 and the presence of at least one Raphanus SNP within SEQ ID Nos 19–21.
• Claims 12 – 16 directed to methods of identifying POSH+ Brassica plants by detecting the presence and absence of the specified Raphanus SNPs;
• Claim 17 directed to a method of using one or more primers for detecting one or more of the Raphanus SNPs;
• Claims 18 – 20 directed to conventional uses of the plants for oil, food, or breeding purposes; and
• Claims 21 – 27 directed to marker-assisted selection (MAS) methods.

The application was challenged on the grounds of novelty, inventive step, support, sufficiency, and utility.

Evidence from six expert witnesses was submitted.  The Opponents’ five experts provided technical and historical evidence on canola breeding, marker use, and prior seed availability.  The Applicant’s expert responded on molecular biology and SNP assay issues.  The key issues in dispute in the evidence included the reliability of KASP assays in detecting SNPs; whether seeds used in tests were genetically stable and available before the priority date of the application; and the extent of the common general knowledge, especially in respect of material presented at International Rapeseed Congresses.

Key Issues

Novelty

The Opponents relied solely on prior use to establish a lack of novelty, namely the sale of seeds having the claimed SNPs before the priority date.  Evidence was submitted in respect of the sale of various seeds before the priority date, which were purported to have the claimed SNPs.  The Delegate noted that there is a high burden on the Opponents to establish that the same seeds in question, by necessity tested well after the priority date, had been available free in law and equity many years before.  The Delegate rejected some of the evidence on the basis that it did not establish on the balance of probabilities that the seeds tested were ones that were commercially available before the priority date.  However, the Delegate accepted evidence of a purchase order showing the purchase of Ogura restorer line CR51 seeds before the priority date.  The CR51 seeds were homozygous for Brassica at SEQ ID NO. 9 and were homozygous for Raphanus at all other loci tested.  As these seeds, when grown, would have inevitably made a plant with the properties of claim 1, claim 1 was found to lack novelty according to the reverse infringement test.  The Delegate also found claims 6 – 8, 11 and 18 – 20 to be anticipated by the prior use of the CR51 seeds.

The Delegate rejected the Applicant’s argument that there could have been no public disclosure of the genotype because the claimed SNPs had not yet been characterised.  The Delegate stated that a plant bearing the claimed SNPs would have infringed the claim before the priority date, whether its genotype was known at the time or not.

Inventive Step

The Opponents core submission was that each of the claims involved nothing more than the use of a standard marker-assisted selection approach to a known breeding problem.  The Opponents alleged that the invention as claimed lacked an inventive step in view of the common general knowledge alone, as well as in view of the common general knowledge in combination with the disclosure of three different prior art documents.

The Delegate applied the commonly used test for inventive step, namely the “Cripps Question”: would the skilled worker have been directly led to the claimed invention with a reasonable expectation of success?

All experts agreed that the International Rapeseed Congresses were key information-sharing events in the field, and that information presented there was most likely common general knowledge.  The Delegate noted that before the priority date, it was already known that the Raphanus introgression used for fertility restoration in canola also conferred pod shatter resistance, but introduced undesirable traits like higher glucosinolate content and smaller pods.  Experts agreed there was industry motivation to reduce the size of the introgression to retain benefits while removing drawbacks.  A 2011 Rapeseed Congress poster confirmed this goal and reported successful selection of restorer lines with improved pod size and quality while maintaining pod shatter resistance.  The Delegate accepted this as representative of common general knowledge and concluded that the skilled person would have had a reasonable expectation of success in achieving shorter introgressions through conventional breeding.

Consequently, the Delegate found that claims 1–11 directed to the Brassica plants, and claims 18 – 20 directed to their uses, lacked an inventive step in view of the common general knowledge alone, on the basis that the development of such plants would have been an inevitable outcome of routine breeding, even if the precise molecular basis was unknown.

However, the Delegate found that claims 12 – 17 and 21 – 27 directed to specific SNP markers and primer-based detection methods were inventive.  There was no evidence to suggest that the skilled worker would have been directly led to the particular marker sequences based on the common general knowledge or any of the cited documents. The Delegate noted that the evidence fell well short of the requirement in the Cripps Question of establishing a motivation to try any of the claimed markers with a reasonable expectation of success in distinguishing Raphanus from napus DNA.

Support and Sufficiency

The Opponents identified three areas where they alleged the scope of the claims exceeded the enabled subject matter: the species of Brassica, the identity of the Raphanus SNPs and the combination of Raphanus SNPs.  The Delegate was particularly critical of the breadth of the claims and found the claims to be broader than the Applicant’s technical contribution to the art.  The Delegate noted that the Applicant’s technical contribution to the art in the application is a set of SNP markers from the Raphanus introgression into B. napus Ogura restorer lines, some of which are associated with pod shatter tolerance and some which are not, and claimed plants that have some of the former and lack some of the latter.

In relation to the claim extending to all Brassica species, the Delegate found that there was no evidence that the phenotype of pod shatter resistance would be achieved in Brassica species other than B. napus or with any different introgression.  The technical contribution was limited to B. napus Ogura restorer lines.

In relation to the claims extending to any Raphanus DNA, the Delegate found that the reference to the Raphanus DNA in claim 1 only makes sense when it refers to the introgression found in Ogura restorer B. napus lines, so the technical contribution is limited to that genetic background.  The Applicant did not sufficiently establish a principle of general application in terms of the combination of Brassica species and the nature of Raphanus DNA.

In relation to the nature of the Raphanus SNPs, the Delegate considered the technical contribution with respect to marker assisted selection was only the SNPs at the underlined positions, and the evidence suggests that to identify new Raphanus specific SNPs in those sequences would require restarting the entire research project which would amount to undue experimentation.

On the question of sufficiency, the Delegate was not convinced that any of the above three variables were principles of general application.  In particular, the Delegate was not convinced that it was plausible that the prediction for pod shatter phenotype would be relevant for plants other than B. napus with the Ogura restorer Raphanus introgression on chromosome 9.  The Delegate noted that while it is plausible that other SNPs could exist within SEQ ID Nos 4-21, identifying those would involve undue experimentation.

Utility

The Opponents argued that the claimed plants did not deliver promised benefits of improved pod size and reduced glucosinolates.  The Delegate rejected this argument, finding that the utility of the invention was more limited, namely, to act as markers for selecting out unnecessary parts of the Raphanus introgression while maintaining pod shattering tolerance.  There was nothing in the evidence that was inconsistent with this.

Outcome

The Opposition was successful on the following grounds:

• Claims 1, 6-8, 11 and 18-20 were found to lack novelty in view of the prior use of the Ogura restorer line CR51, which was available free of law and equity before the priority date, and which was demonstrated to lack the Raphanus SNP of SEQ ID 9.
• Claims 1-11 and 18-20 to plants per se were found to lack inventive step in view of the common general knowledge, in that the skilled worker would have been directly led to reduce the size of the Raphanus introgression through conventional breeding techniques.
• All claims were found to lack support and sufficiency over their full scope, to the extent that they encompass plants other than B. napus with the Raphanus introgression on chromosome 9, derived from the Ogura restorer line, and to the extent that they encompass SNPs other than those underlined in Figures 1 and 2.

As there was a clear prospect that these grounds could be overcome by amendment, the Delegate provided the applicant with an opportunity to amend the claims.  The Applicant has since filed a request to amend the claims, namely, to delete claims 1 – 11 and 18 – 20, and to amend claims 12 – 17 to limit the methods to Brassica napus plants comprising a Raphanus Ogura restorer fragment, and to define the Raphanus SNP as corresponding to the underlined nucleotides in Table 1 of the application.  The Opponents will have an opportunity to comment on the proposed amendments before a decision is made as to their allowability or otherwise.

Implications

This decision highlights the APO’s strict approach to claim breadth in biotechnology patents.  The APO in this case emphasised a strict post-raising the bar sufficiency standard – claims must match the demonstrated technical contribution to the art, and evidence must be sufficient to establish any claimed principle of general application.  Where the technical contribution is limited to a specific species, introgression, or identified markers, claims will not be allowed to extend to broader plant categories or uncharacterised SNPs.  To withstand opposition, the specification should provide sufficient description and examples to enable broader claims, and ability to argue a principle of general application.  Clear, narrower fallback options should also be included in the claims to ensure amendment is possible to survive opposition.  Alternatively, claims should be drafted carefully to align with the Applicant’s demonstrated technical contribution to the art.

This decision also highlights that seed sales can be novelty-destroying even if their genetic content is undisclosed or uncharacterised.

A further takeaway is the Delegate’s finding on inventive step, namely that the claims to the Brassica plants per se were not inventive, yet the claims to the MAS methods were.  This highlights that while conventional plant breeding outcomes may be found to be obvious, claims directed to the molecular tools (for example, specific SNPs/primers) used to breed them can still be inventive, and worthy of patent protection.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.

Urrbrae Foods Pty Ltd v Commonwealth Scientific and Industrial Research Organisation [2025] APO 12

Introduction

The Australian Patent Office (APO) upheld an opposition by Urrbrae Foods Pty Ltd against CSIRO’s patent application number AU2017292900 (the Application) directed to high amylose wheat.  While grounds of manner of manufacture and entitlement failed, the Delegate found the claims lacked support and the opposition was successful on that ground.  CSIRO was given two months to amend, and costs were awarded against it.  No amendments have been filed.  Instead, CSIRO has filed an appeal of the decision in the Federal Court.

Background

The application, entitled “High amylose wheat – III” relates to high amylose wheat plants and methods of producing them.  The invention concerns wheat grains having null mutations in all three SSIIa genes (A, B and D genomes), leading to increased amylose content (≥45%) and higher dietary fibre fractions such as β-glucan, arabinoxylan, cellulose and fructan.  These traits are purported to improve nutritional value and human health outcomes.

The application contained 28 claims at acceptance.  Claim 1, as the only independent claim, reads as follows:

Wheat grain of the species Triticum aestivum, the grain comprising

i.       mutations in each of its SSIIa genes such that the grain is homozygous for a null mutation in its SSIIa-A gene, homozygous for a null mutation in its SSIIa-B gene and homozygous for a null mutation in its SSIIa-D gene,

ii.       a total starch content comprising an amylose content and an amylopectin content,

iii.    a fructan content which is increased relative to wild-type wheat grain on a weight basis, preferably between 3% and 12% of the grain weight,

iv.      a β-glucan content,

v.       an arabinoxylan content,

vi.      a cellulose content,

the grain having a grain weight of between 25mg and 60mg, wherein the amylose content is between 45% and 70% on a weight basis of the total starch content of the grain as determined by iodine binding assay, wherein the amylopectin content on a weight basis is reduced relative to the wild-type wheat grain, wherein each of the β-glucan content, arabinoxylan content and cellulose content are increased relative to the wild-type grain on a weight basis, such that the sum of the fructan content, β-glucan content, arabinoxylan content and cellulose content is between 15% and 30% of the grain weight.

Dependent claims are directed to flour, food products, methods of producing the wheat, and uses in human nutrition.

Urrbrae initially opposed the application on the grounds of entitlement, manner of manufacture, novelty, inventive step, utility and support.  At the hearing, however, Urrbrae pressed only the grounds of manner of manufacture, support and entitlement.

Key Issues

Lack of Support

The central issue in the case concerned whether the claimed invention—wheat grains exhibiting high amylose and fibre content—was enabled and supported across the full scope of the claims, or whether the disclosure only enabled and supported claims to wheat grains from specific genetic backgrounds.

Urrbrae argued that the CSIRO’s technical contribution was confined to grains developed from the Sunco genetic background.  The specification itself, via the worked examples, highlighted Sunco as uniquely successful in achieving the claimed characteristics of the wheat, while grains from other genetic backgrounds such as EGA-Hume and Westonia lines either failed to achieve the claimed characteristics or achieved inconsistent results.  Urrbrae submitted that this demonstrated that the invention could not be performed across its full breadth, and that the claims therefore extended beyond what was enabled or supported by the specification.

In contrast, the CSIRO argued that the invention lay not simply in the generation of the claimed grain lines from one genetic background, but in the method of generating, screening, and selecting suitable lines.  CSIRO maintained that the specification provided sufficient guidance to enable the skilled person to reproduce the invention across different wheat cultivars, without undue experimentation, and that it was unnecessary to exemplify every possible genetic background.  CSIRO characterised Urrbae’s objection as being that, a priori, it is not possible to generate only wheat grain with the required characteristics.

The Delegate agreed in part with Urrbrae, finding that while the specification clearly enabled production of grains meeting the claimed parameters in Sunco and Westonia backgrounds, it provided no guiding principle for extending those results to other genetic lines such as EGA-Hume.  The Delegate noted that, while the specification lists a number of possible genetic backgrounds into which the triple null mutation could be introduced, it does not provide any indication that success in achieving the claimed phenotype is likely in those strains.  The Delegate referred to the comments of Lord Hoffman in Biogen to the effect that where a patentee provides a new product with a beneficial effect but cannot demonstrate a common principle by which a beneficial effect will be shared by other products of the class, they will not be entitled to a claim to the entire class, as being apt in this case.  The Delegate found that the specification recognises that the genetic background of the wheat is important to achieving the claimed results, but there is no further elucidation of any associated principle that would support a technical contribution to the art of the scope claimed.  Determination of whether wheat grains from any particular genetic background will afford the claimed results effectively left the skilled person to conduct a trial-and-error research project where the outcome is uncertain.  As such, the Delegate found that the technical contribution was limited to the success demonstrated in the Sunco and Westonia genetic lines, and the broader claims were not supported to the extent that they encompassed other wheat grains from other genetic backgrounds.

Manner of Manufacture

Urrbrae argued that the invention did not constitute a manner of manufacture under s 18(1)(a) of the Patents Act 1990, contending that (i) the claims lacked inventive character on the face of the specification, and (ii) not everything within the claims was the result of human action.

Lack of Inventive Character

Urrbrae submitted that there is no inventiveness in developing triple null grain with the intention of producing high amylose wheat plants, particularly where there is a need for improving high amylose wheat plants.  Urrbrae argued that the invention was no more than the use of a known property (increased amylose content) of a known article (triple null wheat) for a new use for which that property makes it suitable, and the serendipitous discovery of other properties or characteristics of that wheat do not take it outside of this category.

CSIRO responded that the prior art incorporated into the specification does not state that grain with the defined characteristics could be produced and that admissions that it was known that triple null wheat had a higher amylose content than wild type do not amount to an admission that grain with the combined claimed characteristics was known. CSIRO also pointed to the specification’s reference to the SBEIIa gene as a more obvious target if seeking to produce wheat with at least 50% amylose.

The Delegate was not persuaded that the specification on its face reveals an absence of the requisite quality of inventiveness, stating that while it may have been obvious to generate triple null wheat with an objective of increased amylose content, the specification makes no clear admission that a grain having an amylose content of 45% and the other parameters defined in the present claims was known or a desired result.  To the contrary, that is presented as the invention.  The Delegate stated that it was not apparent on the face of the specification that the claimed invention would be arrived at without invention.

Result of Human Action

Urrbrae argued that the claimed wheat plants were not the result of human action, since the specification allowed for the possibility of naturally occurring mutations and natural crossing or self-fertilisation of grain lines.  On that basis, Urrbrae submitted that the claims could capture plants arising without human intervention.

CSIRO responded that there was no evidence that triple-null wheat plants—those with mutations in all three SSIIa genes and exhibiting the claimed composition—occur naturally.  The specification, particularly Example 4 and its breeding schematics, demonstrated extensive human involvement through controlled crossing, backcrossing, and selection to achieve the desired phenotype.

The Delegate noted that even if natural mutations are theoretically possible, that does not mean they exist in practice.  There was no evidence that any naturally occurring plants fell within the scope of the claims.

The Delegate held that the claimed invention was clearly the product of deliberate human breeding and selection, not a spontaneous natural occurrence.  A mere possibility of natural existence does not meet the balance of probabilities threshold.  Accordingly, the ground that the claims were not the result of human action was not made out.

Lack of Entitlement

Urrbrae alleged the invention was first made by Dr Colin Jenner, whose ‘Cross III’ wheat achieved amylose contents of up to 55%.  However, the Delegate found that there was no persuasive evidence that CSIRO derived its invention from Dr Jenner.  Whilst no evidence was filed by the named inventor, which the Delegate noted would have been the best evidence, internal CSIRO documentation showed the inventive concept was developed independently of Dr Jenner.  The entitlement ground therefore failed.

Outcome

The opposition succeeded on the ground of lack of support.  The grounds of manner of manufacture and entitlement were rejected.  CSIRO was given two months to file amendments to narrow the claims to align with its demonstrated contribution to the art. Costs were awarded against CSIRO.  CSIRO has not filed any amendments.  Instead, CSIRO has filed an appeal with the Federal Court.

Implications

This decision demonstrates the APO’s strict application of post-Raising the Bar support requirements in the agricultural biotech space.  Broad claims encompassing wheat grains from all genetic lines were not allowed due to a lack of consistent experimental evidence that established a principle of general application.  This finding emphasises the importance, in biotechnology and plant breeding cases, of articulating a clear principle or rationale for why an invention should be expected to work across its claimed scope, particularly when results vary across genetic backgrounds.  Without this, patent applicants risk having their monopoly confined to specific examples rather than the broader class of products they intended to protect.

The decision also confirms that plant breeding inventions remain patentable in Australia where they involve deliberate human intervention, even if some mutations could theoretically occur in nature.  However, patentees should ensure their specifications clearly describe the inventive human contribution, particularly where the invention builds on naturally occurring traits or known breeding systems.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.

Seqirus, Inc. v Translate Bio, Inc. [2025] APO 5 (18 February 2025)

Background

Seqirus, Inc. opposed Translate Bio, Inc.’s patent application (AU2020202755) concerning the in vivo delivery of mRNA for augmenting proteins and enzymes in genetic diseases.  The invention’s contribution lay in specific liposome-forming lipid combinations (and ratios) which encapsulate the mRNA to facilitate delivery into a cell.  Whilst the specification exemplified liposomes with specific combinations and ratios of various lipids, the claims defined the combinations more broadly than what was exemplified.

Seqirus opposed the application on several grounds, including novelty, inventive step, utility, clarity, sufficiency and support.  The fate of the opposition ultimately turned on the questions of sufficiency (clear enough and complete enough disclosure) and support.

Key Issues and Consideration

Novelty and Inventive Step

The novelty and inventive step debates were straightforward.

Seqirus raised a series of prior art documents on the question of novelty.  The Delegate, however, was not persuaded that any of this prior art provided a clear and unmistakable direction for the claimed liposome composition having the required combination of lipid components, encapsulating within its interior mRNA having the required structure, and a size of less than about 150 nm.

The Delegate then considered inventive step based on the common general knowledge alone and taken together with a series of prior art documents.  When considered in light of the common general knowledge alone, the Delegate stated that, at best, the evidence suggested that a person skilled in the art would have contemplated formulating mRNA with liposomes.  However, it remained unanswered whether the liposome would have encapsulated or merely formed complexes with the mRNA, and what liposome formulation would have been used or what structural modifications may have been carried out on the mRNA.  Ultimately, the Delegate found that, while each feature of the claims was individually known in the art, the combination of those features was not obvious.  The Delegate also did not accept that a person skilled in the art faced with the problem of formulating mRNA for delivery, transfection and protein expression, and armed with any one of the prior art documents would arrive at the claimed invention as a matter of routine.

Utility

On the question of utility, both sides agreed that the specification showed that the scope of the claims included something that was capable of delivering mRNA to a cell and expressing the encoded protein in vivo.  Seqirus argued that a therapeutic effect was also required (but not demonstrated).  However, the Delegate, agreeing with Translate Bio, held that the ‘promise’ of the invention was delivery, transfection, and expression only, and that no therapeutic effect was required.  Consequently, this ground of opposition failed.

Sufficiency (clear enough and complete enough)

This was the decisive issue (together with that of support).

Australia’s law on sufficiency requires the specification to disclose the claimed invention in a manner that is clear enough and complete enough to enable a skilled person to perform the invention across the full width of the claims without undue burden or further invention.

In the present case, the claims covered broad ranges of lipid ratios (e.g., 20–70% cationic lipid, 5%–90% non-cationic lipid (cholesterol and either DSPC or DOPE) and 1 %–15% PEG-modified lipids, but the specification only exemplified narrow ranges (e.g., 25–30% cationic lipid, ~40% cholesterol, 4% PEG-lipid).  The question at hand, was whether Translate Bio’s contribution to the art extends to the general principle of encapsulating mRNA within the full breadth of the claimed liposomes and whether this has been sufficiently enabled.  Experts on both sides agreed that small deviations in lipid content could collapse formulation stability of the essential liposome.  In accepting the evidence presented, the Delegate concluded that each component in the liposome had structural and functional features, and that, if these components were not properly balanced, the successful formation of the liposome which was essential for delivery of the mRNA to the cell could be disrupted.  Thus, the Delegate concluded that the specification did not provide a general principle for broader application beyond what was illustrated in the examples.  As such the claims were said to be overly broad and not enabled across the full scope of the claims.

Support

For similar reasons, the broad monopoly claimed was not commensurate with the technical contribution.  Translate Bio’s demonstrated contribution lay in identifying certain four-component lipid mixtures suitable for encapsulating and delivering mRNA, not a general principle covering all the broadly claimed ranges.

Outcome

The opposition succeeded on grounds of insufficiency and lack of support.  All claims were found invalid in their current form.  Translate Bio was given two months to propose amendments to overcome these deficiencies, but no amendments were proposed before the deadline.  The application was formally refused on 12 May 2025, and costs were awarded to Seqirus.

Implications

Patent applicants should be careful to:

• describe the invention thoroughly in the specification and include multiple different embodiments and variations traversing the full scope of the claims;
• exercise caution when drafting claims which go beyond what is exemplified;
• avoid overly broad generalisations which are not supported by a clear and detailed description; and
• provide a clear and logical progression from the worked examples to the broader embodiments, including a detailed outline of any claimed principle of general application.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.

Highlight

This decision concerns the apportionment of costs arising from the substantive decision in Miele & Cie KG v Bruckbauer [2025] FCA 537 (27 May 2025) (Substantive Decision). Justice Rofe considered the appropriate apportionment of costs where Bruckbauer had rejected a Calderbank offer from Miele but ultimately failed in its infringement case, and where Miele had made certain strategic choices which resulted in higher evidence costs being incurred by both parties but with no effect on the overall result of the case.

Background

In the Substantive Decision in May 2025, Miele succeeded in revoking relevant claims of Bruckbauer’s patent AU2012247900 entitled “Hob with central removal of cooking vapours by suction-extraction in the downward direction” (the Patent), which Bruckbauer claimed were infringed by Miele’s cook-top hobs. The revocation of the relevant claims meant that Miele’s cook-top hobs did not infringe Bruckbauer’s Patent.

In the course of the infringement proceedings, and after the close of evidence, Miele served Bruckbauer with a Notice of Offer to Compromise together with a Calderbank offer. The Notice and Calderbank offer together proposed resolution of the proceedings, including that Bruckbauer would pay Miele’s costs in the sum of AUD $250,000, and that the parties would take all necessary steps to facilitate suitable orders being made by the Court to support the resolution of the matter and the payment of costs to Miele. Bruckbauer rejected the offer but subsequently failed in its infringement case.

Key Issues and Consideration

Since Miele succeeded in the Substantive Decision, Miele was entitled to costs. As a result of the Notice and Calderbank offer, Miele argued that it was entitled to indemnity costs. The parties disagreed on two issues affecting the apportionment of costs, namely whether:

1. Miele’s recoverable costs should be discounted due to Miele’s lack of success in relation to certain issues argued in the case (the Chinese Amendments); and

2. Miele should be awarded a portion of its costs on an indemnity basis due to the rejected Calderbank.

In relation to the first point, Miele had argued in the substantive proceedings that the Chinese Amendments (which were amendments made by Bruckbauer to one of its Chinese patent applications) were publicly available in 2015 and disclosed the invention claimed in the Patent, therefore making the relevant claims of the Patent invalid. This argument was ultimately unsuccessful but resulted in a substantial amount of evidence being dedicated to the Chinese Amendments, including unscheduled evidence from Miele which was served days before the start of the trial. Justice Rofe found that a significant portion of the trial was devoted to the issue of the public availability of the Chinese Amendments and the trial was extended due to issues with interpreter-related delays (i.e. lengthening of cross examination due to translation of questions and answers) and uncooperative conduct from witnesses on both sides. Justice Rofe found that it was appropriate to reduce Miele’s costs by 15%, as Miele had initiated the Chinese Amendments issue and the related line of evidence, which ultimately did not add any value to Miele’s invalidity case against the Patent. Accordingly, her Honour considered that the costs would not have been incurred had the issue of the Chinese Amendments not been raised.

In relation to the second point, Justice Rofe considered whether Miele was entitled to indemnity costs under Rule 25.14(3) of the Federal Court Rules 2011 (Cth), which provides:

(3) If an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment that is more favourable than the terms of the offer, the applicant is entitled to an order that the respondent pay the applicant’s costs:

(a) before 11.00 am on the second business day after the offer was served–on a party and party basis; and

(b) after the time mentioned in paragraph (a)–on an indemnity basis.

Bruckbauer argued that, the Substantive Decision was not more favourable to Miele than what was proposed by Miele under the offer, that the offer was not a genuine compromise and, for those reasons it was reasonable for Bruckbauer to reject the offer. Justice Rofe disagreed, saying that Miele had achieved a more favourable judgment than what was proposed in the offer. Her Honour also considered that no exceptional circumstances existed which would justify an order inconsistent with the Federal Court Rules. Justice Rofe was of the view that the Calderbank offer, which explained why Miele believed it would succeed at trial, constituted a genuine offer of compromise as there was little else that Miele could offer to Bruckbauer by way of compromise and that, by the time Miele extended the offer, Bruckbauer should have been aware that its infringement case was weak. As a result, no exceptional circumstances were established.

Outcome and Implications

Bruckbauer was ordered to pay 85% of Miele’s costs on an indemnity basis from the second business day after the offer was served on Bruckbauer. Miele’s overall costs were discounted by 15% because it had chosen to pursue the Chinese Amendments issue and the associated line of evidence which ultimately had no impact on the outcome of the case.

Justice Rofe’s decision highlights the impact that evidentiary decisions and offers of compromise can have on the extent of the ultimate costs orders. This is of great significance given the high cost of patent litigation in Australia.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.

Oxford Nanopore Technologies Plc v MGI Australia Pty Ltd (No 2) [2025] FCA 869

Highlight

Justice Jackman has confirmed that, in the context of a preliminary discovery application, where a prospective applicant vacates a hearing date and the prospective respondent has incurred costs in preparing for the vacated hearing, the question of costs should be determined later, either in the course of disposing of the preliminary discovery proceedings or in any substantive patent infringement proceedings that are later commenced. As a result, MGI Australia failed in its application for costs incurred in preparing for the vacated preliminary discovery hearing.

Background

In March 2025, Oxford Nanopore Technology (ONT) commenced an application for preliminary discovery from MGI Australia (MGI) in order to decide whether to commence patent infringement proceedings against MGI. Since December 2024, MGI had refused to provide samples of its nanopore sequencing devices to ONT so that ONT could determine whether ONT’s patents were infringed by those devices. In the course of these proceedings, the hearing of the application for preliminary discovery was listed for 24 July 2025 and MGI had filed evidence in answer to the application on 28 May 2025.

In late June 2025, ONT informed MGI that it had been able to independently acquire some, but not all, of the materials the subject of the application and that ONT expected to have sufficient basis to commence substantive proceedings for patent infringement. On 4 July 2025, the parties proposed that, among other things, the hearing listed for 24 July 2025 be vacated and that the current proceedings be stayed for three (3) months so that ONT could decide whether to file substantive proceedings within that three (3) month period. In addition to those proposed orders, MGI proposed that ONT pay MGI’s costs incurred in preparing for the vacated hearing. ONT opposed this order, so Justice Jackman indicated that he would decide the matter on the papers, with parties to make suitable submissions.

Key Issues

The key issue under consideration was whether ONT should be responsible for MGI’s costs in preparing for the hearing that was vacated. MGI’s position was that ONT would ordinarily be required to pay costs thrown away by its application and vacated hearing, while ONT’s position was that MGI’s costs were reasonably incurred as the work done would be useful for the purpose of a hearing if substantive proceedings were commenced. ONT argued that any order for costs would be premature and should be deferred until ONT commenced substantive proceedings as ONT expected to rely on MGI’s behaviour in refusing to provide samples of the allegedly infringing devices when requested. If substantive proceedings were not commenced in due course, the costs of the preliminary discovery application would be determined as part of the disposal of the application.

Outcome

Justice Jackman accepted ONT’s submission that an order for costs would be premature as, at the time the hearing was scheduled, MGI had resisted ONT’s requests to produce relevant material, thereby necessitating the preliminary discovery application. His Honour ordered that the question of costs should be reserved for later determination, either in the course of disposing of the current proceedings or in any substantive proceedings that ONT commenced, given that MGI’s conduct between December 2024 and June 2025 in refusing to provide samples had played a part in ONT commencing the application for preliminary discovery.

Implications

This decision turns on the fairly specific circumstances of a hearing for an application for preliminary discovery being vacated because the patentee had been able to independently obtain evidence that would allow it to determine whether substantive proceedings should be commenced. Parties to patent proceedings are required to act with an overarching purpose of facilitating the just resolution of a dispute as quickly, inexpensively and efficiently as possible, and often this assessment cannot be made until all of the relevant circumstances have been revealed.

Subsequent developments

The application for preliminary discovery was withdrawn on 18 September 2025, with ONT commencing patent infringement proceedings against MGI on 6 August 2025.

About Pearce IP

Pearce IP is a specialist firm offering intellectual property specialist lawyers and attorneys with a focus on the life sciences industries.  Pearce IP and its leaders are ranked in every notable legal directory for legal, patent and trade mark excellence, including: Chambers & Partners, Legal 500, IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WTR 1000, Best Lawyers, WIPR Leaders, 5 Star IP Lawyers, among others.

In 2025, Pearce IP was recognised by Australasian Lawyer and New Zealand Lawyer’s 5 Star Employer of Choice, and is the “Standout Winner” for inclusion and culture for firms with less than 100 employees. Pearce IP was awarded “IP Team of the Year” by Lawyers Weekly at the 2021 Australian Law Awards. Pearce IP is recognised by Managing IP as the only leading ANZ IP firm with a female founder, and is certified by WEConnect International as women owned.