Added matter matters in Australia: Impermissible amendments to patent specifications after Raising the Bar

CSIRO v BASF Plant Science GmbH [2020] FCA 328 is the first decision of an Australian court which specifically concerns amendments to patent specifications under s 102(1) of the Patents Act 1990, as amended by the ‘Raising the Bar’ Act.^[1] In this case, Beach J applied the same strict test used by UK courts in relation to added matter and found that BASF’s proposed amendments were impermissible because they claimed and disclosed matter that extended beyond the specification as filed.

As Beach J indicated in his decision, the Raising the Bar Act aimed to align Australian law with the strict approach taken by the UK courts and EPO in relation to added matter. It should therefore come as no surprise to those familiar with the legislative changes in Australia that Beach J used such a strict approach in determining that BASF’s amendments were impermissible. Nevertheless, his Honour’s decision clearly marks an end to Australia’s generous approach to amendments prior to Raising the Bar.

The amendments

BASF’s application relates to genes from a species of unicellular algae that encode enzymes which can be used to create transgenic plants for recombinant production of polyunsaturated fatty acids. In a passage referred to by the parties as the ‘bridging paragraph’, the specification as filed stated that:

The invention, the subject of the present application, is directed to the following:

• a CoA-dependent delta-6 desaturase having the substrate specificity of the delta-6 desaturase shown in SEQ ID NO:14 [referred to by Beach J as Feature A], and
• the above CoA-dependent delta-6 desaturase which has a preference for conversion of alpha linolenic acid compared to linoleic acid [referred to by Beach J as Feature B]. (emphasis added)

BASF’s proposed amendments sought to claim and disclose a CoA-dependent delta-6 desaturase:

• encoded by a polynucleotide having at least 75% identity to a nucleotide sequence which codes for a polypeptide as shown in SEQ ID NO: 14 (eg claim 1 prior to amendment), referred to by Beach J as ‘Feature C’; and
• that preferentially converts alpha linolenic acid compared to linoleic acid (eg new claim 2, dependent on claim 1), referred to by Beach J as ‘Feature B’.

The main question faced by Beach J in this case was therefore whether it is allowable to amend a patent specification to introduce a claim directed to the combination of Feature B and Feature C (eg new claim 2), when the only disclosure of Feature B in the specification as filed was in the context of Feature A (a much narrower subset of Feature C) in the bridging paragraph.

The decision

In his decision, Beach J cited several landmark UK decisions on added matter (including Bonzel and Richardson-Vicks) and found that there was ‘no good reason not to follow the UK authorities' for construing the present form of s 102(1) of the Act.^[2] In doing so, Beach J confirmed that, after Raising the Bar ‘the test is a strict one’ in Australia, but refused to opine on the old s 102(1) for fear of ‘getting lost in some jurisprudential twilight zone’.^[3],[4]

BASF argued that there was a literal reference to Feature C in a paragraph on page 8 of specification as filed. However, Beach J decided that the page 8 paragraph could only be read in the context of the description of ‘the invention’ in the bridging paragraph. In this regard, Beach J held that ‘[a] patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context’ and therefore BASF’s amendments constituted an impermissible intermediate generalisation.^[5]

In light of Beach J’s decision, even where there is literal reference to a feature in the specification as filed, an amendment to include that feature in an Australian patent specification can amount to added matter if that feature is taken out of context.

Beach J’s decision, which was not appealed by BASF, confirms a stringent new test for determining whether an amendment to a patent specification is allowable in Australia. This strict test will be all too familiar to our colleagues in the UK and Europe, but will force a change in the practice of Australian attorneys who, prior to Raising the Bar, have long enjoyed very lenient law governing amendments.