Melbourne-based patent attorney Ben Dziekan has been named co-winner of the Institute of Patent and Trade Mark Attorneys of Australia’s (IPTA) prestigious Edwards Waters Prize for 2021.

The award is presented to the best performing Patent Attorney in their first year of practice, in recognition of both professional (post registration) performance as well as academic performance during the Masters of IP.

Speaking on the announcement, Griffith Hack managing director Aaron LePoidevin said, “This award is tremendous recognition of Ben’s committed and professional approach to his clients, and the technical and commercial acumen he demonstrates in all matters he works on. On behalf of everyone at Griffith Hack, we congratulate Ben on this well deserved honour.”

Ben, together with co-recipient Samuel Elnajar, will formally receive the award at the 2022 IPTA Annual Conference, where Ben is scheduled to speak on the state of play of Sports and Esports IP in Australia.

Australia’s pre‑grant opposition proceedings are playing a more significant role in the strategies of patentees and challengers. 

However, facing a patent opposition in Australia is a new experience for many patent owners. So, what should a patent owner do when faced with an opposition in Australia?

Time is on your side, but don’t sit around

As a patent applicant, time is on your side at the start of the patent opposition procedure. Work on the overall defence plan should commence promptly. Early decisions can be crucial to success, and early mistakes could end up being fatal. Accordingly, long-term planning ought to be done sooner rather than later.  In the past, patent opposition proceedings in Australia often became protracted due to generous provisions relating to extensions of time for lodging evidence. This is no longer the case.

Evidentiary time periods are still extendable, but the regulations relating to extensions of time for evidentiary periods are now reasonably onerous and strictly applied by IP Australia. Unless a party can show that they acted promptly and diligently and made all reasonable efforts to file the evidence in time, an extension will not be granted. In situations where, for example, a party wishes to provide experimental evidence to support their case, such studies may need to be set up early on in the proceedings.

What does an Australian patent opposition involve?

Patent oppositions are conducted before the Australian Patent Office (IP Australia). Any person can oppose the grant of a patent on a patent application by filing a notice of opposition (a simple one-page form) within three months of publication of acceptance of the patent application. Straw man oppositions, where the opposition is filed in the name of a third party (usually a patent attorney firm), are also possible.

After filing the notice of opposition, the opponent has three months to file a statement setting out the grounds and particulars of the opposition, together with a copy of any documents referred to in the statement. The grounds for opposition include:

  • non-entitlement;
  • the invention is not a patentable invention (including not patentable subject matter, lack of novelty or inventive step, in-utility, prior secret use); and/or
  • the specification does not comply with the written description requirements section 40(2) or 40(3) of the Patents Act 1990 (Cth).

Both parties are given the opportunity to file evidence. The evidence in patent oppositions is filed in the form of declarations. In a typical opposition the evidence will include declarations by one or more experts. 

Once all the evidence has been filed, the opposition is then set down for a hearing. Submissions may be made at the hearing in person, by video-conference or in writing. The hearing officer usually takes about three to six months to issue a written decision. The decision in an opposition can also be appealed as of right to the Federal Court of Australia.

Develop a strategy early

Initially patent owners should conduct a cost-benefit analysis, e.g. evaluating the value of the patent versus the cost of fighting the opposition, in view of the likelihood of success. In doing so, it is important to bear in mind that the fact an opposition has been filed strongly indicates that it is at least commercially important to the opponent to try and ‘clear the path’.

If defence is warranted, it is critical to identify potential experts that might assist with providing evidence at an early stage. Obviously, any expert must have the relevant expertise, but they also need to be available to assist, both logistically and in terms of potential conflicts. In highly specialised technical areas the number of potential experts can be small, and it can be a race to secure the best options.

Whilst the case against the patent application cannot be fully understood until the evidentiary rounds are complete, we recommend conducting an analysis of the opposition at an early stage once the Opponent’s Statement of Grounds and Particulars is received, and then updating that analysis on receipt of the evidence. This early review includes understanding the commercial position, considering the patent specification and prior art, and reviewing prosecution history in Australia and other major countries. The analysis can assist with identifying suitable experts, understanding which topics are important to address in the evidence, and highlighting possible amendments that may strengthen the patent application.

Patent applications under opposition can be amended as of right at any time, even after a written decision has issued. The procedure takes time, however, as the amendments need to be advertised for two months and can delay the proceedings. If amendments might be required or desirable, it is important to consider the best timing for making those amendments.

Consider your options for new representation

Opposition practice is a specialised area of Australian patent law, particularly with regard to areas such as preparation of expert evidence, hearing preparation, dealing with procedural aspects and extending into commercial aspects such as settlement negotiations and licensing.

Not all Australian patent attorneys handle patent oppositions regularly and even some that do simply default to a ‘wait and see’ approach when acting for patent applicants. Sometimes that is the right approach, but not always. If your Australian patent attorneys are not proactively engaging with you on these issues, then it is worth considering whether they are the right team for your matter.

How we can help

Griffith Hack’s experts have extensive experience in handling Australian patent oppositions. Our combined patent attorney and legal team provides integrated scientific and legal expertise, together with strategic, commercially-relevant insight, and has a proven track record in delivering results.

To discuss patent oppositions further with a member of our team, click on their profiles on this page.

Despite not being specifically excluded under s18 of the Australian Patents Act, technology utilising embryonic stem cells (ESCs) is not able to be patented in Australia.

With the technology forming a critical pillar of regenerative medicine and therefore having the potential to help realise treatments for some of the world’s most wicked diseases, and since Australia has such a strong reputation for cutting edge biological invention, why is this so?

The story of modern regenerative medicine begins in 1998, in the laboratories of Jamie Thompson at the University of Wisconsin. Working on rhesus monkeys, Thompson’s group showed for the first time that you could program ESCs to differentiate into pluripotent cells.

This gave rise to one of the key pillars of regenerative medicine – the ability to replenish cells in degenerative disorders. The breakthrough also brought with it a small, but growing minority who began to voice more loudly their objections to such use. Primarily, these objections arose from the need to use spare embryos donated from couples undergoing IVF.

These ethical and political concerns intertwined with the patentability of ESCs in Australia in an unexpected way.

The legislative framework

In Australia, section 18(2) of the Patents Act specifically excludes the patentability of ‘humans and biological processes for their generation’. The amendment was introduced during the Patents Bill 1990 by conservative catholic senator, Brian Harradine, almost as an after-thought.

In the second reading of the Bill, the Hon Simon Crean, the Minister for Science and Technology was sufficiently concerned by the absence of comment from the Opposition to voice his opinion. Stating that ‘flexibility was needed’, Mr Crean pointed out numerous scientific advances that were not anticipated by the preceding Patent Acts and suggested that the amendment should not be viewed as restricting patentability. Yet the repercussions of the hurried exclusion, incorporating concerns along the political, theological and ethical spectrum, while not explicitly defining what constitutes a ‘human being’, are felt even today, over 20 years later.

Why Australian patent applications are rejected

A quick review of recent patent applications claiming methods or uses of ESCs reveals numerous applications that have lapsed due to failure to gain acceptance. This is because, based on a 2004 decision of the Commissioner of Patents , they automatically trigger a s18(2) exclusion from patentability on the basis that an ESC can only be created in a process that involves the establishment of human life via a fertilized ovum, no matter how early. A review of these objections reveals that the IP Australia takes a hardline stance on patents directed to the utilisation or generation of ESCs, regardless of whether embryos are created, destroyed or arise from surplus Assisted Reproductive Technology embryos.

Yet given that the initial consternation arising from Senator Harradine’s conservatism was an objection to the potential destruction of embryos, and with the passage of time, it is interesting to reflect on whether or not such a hardline stance would hold up in a challenge to the Commissioner of Patents refusal to progress patent applications directed to ESCs.

A 2016 challenge did marginally move the goalposts: if the patent claims relate to parthenotes and parthenogenesis, IP Australia considers them no longer to fall under the umbrella exclusion of s 18(2). Parthenogenesis, in which researchers use chemicals to induce the egg to begin developing as if it had been fertilized. The egg—called a parthenote—behaves just like an embryo in the early stages of division. However, because it contains no genetic material from a father, it cannot develop into a viable fetus. This result was achieved by the patent applicant taking the issue to a hearing – a high stakes step which might have resulted in more weight to the Commissioner’s decision to reject applications under s18(2) rather than a relaxation of the position.

Time for a more modern approach?

In 2001, President George W Bush introduced restrictions on federal funding for research involving embryonic stem cells. This meant that projects that did not utilize already derived stem cell lines would not be eligible for funding. In a move meant to circumvent these restrictions, California voters in 2004 voted 59% in favour of the establishment of the California Institute for Regenerative Medicine (CIRM), a $3 billion dollar stem cell research agency. Unlike Australia, politicians struck while the stem cell iron was hot, and built on the optimism generated by early stem cell research. Fast forward to 2021 and California is now an international hub for regenerative medicine. The majority of CIRM’s research grants have been awarded to universities like Stanford, USC and UCLA, where researchers have made significant advances in stem cell research.

It has been over 20 years since the modern regenerative medicine story started, and ESC research is moving into clinical phases all over the world, including in Australia. Research has progressed from merely identifying these cells,[5] to now knowing how to replicate the intrinsic cues to trigger the differentiation of ESCs to beating heart cells.[6] Perhaps it is time to again revisit the exclusion from a legal and judicial perspective. Drawing inspiration from the words of Bruce Lehman, the former Commissioner of the USPTO, we are not patenting life – we are patenting technology.

If you would like to discuss the patentability generally in stem cells, or have a more specific query about embryonic stem cell technology, contact us.


[1] C Limon, ‘Human beings as non-patentable inventions’ in Yoriko Otomo and Edward Mussawir (eds), ‘Law and the Question of the Animal: A Critical Jurisprudence’, 57.

[2] Commonwealth, Parliamentary Debates, Senate, 16 October 1990, 2954 (Simon Crean, Minister for Science and Technology).

[3] Fertilitescentrum AB and Luminis Pty Ltd. (2004) (APO 19)

[4] International Stem Cell Corporation [2016] APO 52

[5] Martin, G. R. Proc. Natl Acad. Sci. USA 78, 7634–7638 (1981) and Evans, M. J. & Kaufman, M. H. Nature 292, 154–156 (1981).

[6] Murray, C. E. & Keller, G. Cell 132, 661–680 (2008).

There is increasing awareness (in part due to COVID-19) that mental ill-health can affect anyone under certain circumstances, and that mental ill-health can be prevalent in society. 

Within this context, it may be an opportune time to analyse promising and/or effective therapies that have not yet entered mainstream therapy for mental ill-health, likely because of regulatory impediments. One such class of therapy would be psychedelic therapy.

On 25 August 2021, Mind Medicine Australia (MMA) released a media alert urgently calling for the Australian Federal and State governments to enable psychedelic-assisted therapies to be used to treat severely ill patients who desperately need safe and effective treatments. MMA noted that current treatments achieve remission rates for depression of around 30-35% and for PTSD only around 5%. In contrast, MMA noted that psychedelic-assisted therapy with psilocybin and 3,4-methylenedioxymethamphetamine (MDMA) achieved remission rates for depression and PTSD of between 60 and 80% after just 2 to 3 treatments in combination with a short course of psychotherapy. In Australia, psilocybin and MDMA are classified by the Therapeutic Goods Administration (TGA) in Schedule 9 as Prohibited Substances.

Despite this contrast in therapeutic efficacy, MMA highlighted what it referred to as an absurd situation preventing such therapy. Specifically, psychiatrists in Australia can obtain approval from the TGA to use substances such as these in medically-controlled environments as part of psychotherapy, but are unable to do so because the States and Territories of Australia (except Victoria) do not have a permit system allowing access to Schedule 9 substances.

In July 2020, MMA applied to have certain psychedelics reclassified from Schedule 9 to Schedule 8 as Controlled Drugs. In a further media release dated 1 October 2021, MMA announced that the TGA had moved one step closer to rescheduling MDMA and psilocybin in Australia upon release of the TGA’s Independent Expert Panel on MDMA and psilocybin on 30 September 2021. The Panel searched for randomised controlled trials (RCTs) of MDMA and psilocybin with either inactive or active controls, reviewed the outcomes, and conducted a meta-analysis on the studies. The Panel demonstrated statistically significant differences of the two psychedelic agents between both inactive and active treatments and noted that both agents were well-tolerated. The Panel concluded that:

…MDMA and psilocybin may show promise in highly selected populations but only where these medicines are administered in closely clinically supervised settings and with intensive professional support.

The Panel’s report will be considered by the Advisory Committee of Medicines Scheduling (ACMS) on 3 November 2021, with a final decision anticipated to be published the first week of December 2021.

If psychedelics are to achieve their promise in treating mental ill-health, what tools are available to promote and reward innovation and commercialisation in bringing improved therapies to market? With this question in mind, we address below two aspects of registrable intellectual property (IP), patents and plant breeder rights (PBRs), that could contribute to advancing psychedelic therapies.

Patents

According to the Poisons Standard June 2021 (a legislative instrument made under the Therapeutic Goods Act 1989), Schedule 9 is described as (emphasis added):

Prohibited Substance – Substances which may be abused or misused, the manufacture, possession, sale or use of which should be prohibited by law except when required for medical or scientific research, or for analytical, teaching or training purposes with approval of Commonwealth and/or State or Territory Health Authorities.

Schedule 9 contains substances that should be available only for teaching, training, medical or scientific research including clinical trials conducted with the approval of Commonwealth and/or State and Territory health authorities. Although appearing as a Schedule in this Standard, the method by which it is implemented in the States and Territories may vary.

Section 50(1)(a) of the Patents Act 1990 (Cth) provides that (emphasis added):

The Commissioner may refuse to accept a request and specification relating to a standard patent, or to grant a standard patent for an invention the use of which would be contrary to law.

Accordingly, by use of discretionary rather than mandatory language, and despite Schedule 9 being for “Prohibited Substances”, neither the Patents Act 1990 nor the Poisons Standard June 2021 appear to prohibit patenting a Schedule 9 psychedelic.

Having said that, MDMA was developed by Merck in 1912 and psilocybin was isolated from the mushroom Psilocybe mexicana in 1959, so clearly, these psychedelics are not new, and therefore cannot be afforded patent protection, because they lack novelty. However, patent protection would be available for new and non-obvious:

  • derivatives with improved characteristics
  • genetically modified organisms producing a psychedelic or derivative
  • processes for production, isolation and/or formulation
  • combination formulations
  • treatment indications
  • patient sub-groups
  • methods for identifying patients amenable to treatment
  • dosage regimens
  • administration devices

In other words, despite some psychedelics with therapeutic benefits being known, there remains ample scope to develop patent coverage to promote commercialisation of psychedelic therapies.

Plant breeder/variety rights

In addition to the potential for obtaining patent coverage for genetically modified organisms producing a psychedelic or derivative, it would also be possible to obtain PBR if the genetically modified organism was a new variety of plant, fungus or alga (but not a bacterium, bacteroid, mycoplasma, virus, viroid or bacteriophage).

Further, PBR may be granted in addition to a patent. The terms of each form of IP may run concurrently, but conceivably, a new plant variety could be generated and covered by PBR after filing a patent application or even after grant of a patent to which the new variety relates. This could extend IP coverage related to a psychedelic or derivative beyond that of a patent. Notably, and in contrast to patents, PBRs run from the date of grant rather than the date of filing. For most plants, the term is 20 years, but for trees and some vines, the term is 25 years. As such, a PBR could extend considerably beyond a patent for related plant technology.

Other IP

Although we have discussed patents and PBRs, other forms of registrable IP such as trade marks (protecting a badge of origin) and designs (protecting visual appearance) may also be important for promoting commercialisation and bringing psychedelic therapies to market.

How we can help

At Griffith Hack, we are client-centric. We reduce complexity in and maximise the impact of your IP to target commercial results for you. We are experts in all areas of IP. In particular, we have extensive experience in managing IP protection for Scheduled substances such as opioids and cannabis extracts. Together, our technically diverse patents, trade marks and legal teams can assist you with protecting and commercialising innovative psychedelic therapies as the regulatory framework develops. So please contact us if you wish to explore IP strategies for psychedelic therapies.

Welcome to the first article in our five-part Spotlight Series on one of the most exciting frontiers of scientific research and innovation, regenerative medicine.

Throughout this series, we will find out more about what regenerative medicine encompasses, its historical origins, recent advances in the lab and the clinic, the current standard of care, and look over the horizon to what the future holds for the sector.

What is regenerative medicine?

Regenerative medicine refers to the field of study harnessing the body’s innate ability to repair, restore or establish normal function due to damage or impairment, whether through birth, disease, trauma or aging. The appeal of regenerative medicine lies in the potential to utilise normal repair mechanisms within our body to restore function to a damaged organ, or to treat previously incurable diseases such as cancer.

“Regenerative medicine is the process of creating living, functional tissues to repair or replace tissue or organ function lost due to age, disease, damage, or congenital defects. This field holds the promise of regenerating damaged tissues and organs in the body by stimulating previously irreparable organs to heal themselves. Regenerative medicine also empowers scientists to grow tissues and organs in the laboratory and safely implant them when the body cannot heal itself.”

The National Institutes of Health (NIH) in 2006

Stem cell therapies are the most well-known arm of regenerative medicine, however the field also includes other cell therapies (such as CAR T cell therapies), genetic therapies, nanotechnology and biomedical engineering, and reprogramming of cells and tissue.

Experts in the field come from a plethora of backgrounds and expertise. Biomedical engineers and computer scientists might come together on how to generate 3D-printed biologically compatible scaffolds to be implanted into a site of injury, in order to promote formation of new tissue and cell regeneration. Clinicians and stem cell scientists could collaborate on an autologous stem cell therapy, from isolating appropriate adult stem cells from an individual, treating or activating the stem cells in the laboratory and re-injecting the stem cells to the same individual at a site of injury to repair damage. Developmental biologists are working on how to reprogram embryonic stem cells to grow tissues and organs in the lab, and provide an avenue for thousands of people waiting on an organ transplant list.

The future is bright

Regenerative medicine has truly come to the forefront in the last decade. Perhaps the superstar of the sector is chimeric antigen receptor (CAR) T-cell therapy, including Kymriah ® for treating leukemia (by Novartis) and Yescarta ® for treating lymphoma (by Gilead Sciences), both of which received FDA Approval in the U.S.A. in 2017. CAR T-cell therapies isolate T cells (a type of immune cell) from a patient suffering from cancer, genetically edit these T cells in the lab so that the T cells express a CAR, and transplant the edited CAR T-cells back into the patient. The T cells now express CARs, which are cell surface receptors that target cancer cells, thereby bringing the CAR-T cell into contact with the cancer cells so that the CAR-T cells can kill the cancer cells. CAR-T cell therapies have taken the biotechnology industry by storm, resulting in a number of large mergers and acquisitions of regenerative medicine companies, and an increasingly competitive and dense patent landscape.

On the other hand, relatively established cell therapies such as bone marrow transplantation have matured and is expected to be a US$15 billion market by 2027. The surge is thought to be driven by the growing prevalence of cancer and anemia patients, who have compromised bone marrow and require transplanted stem cells to repair and replace the injured cells.

The regenerative medicine sector globally is projected to develop into a US$120 billion market by 2035 (UK Cell and Gene Therapy Catapult, AusBiotech 2018 report). A recent draft strategic roadmap released by a consortium of leading companies in the regenerative medicine landscape in Australia suggests that proper investment and development of our manufacturing capabilities would translate to at least AUD$6 billion in revenue and 6,000 new jobs for Australia in the same timeframe.

Australia remains one of the leaders in basic research for the regenerative medicine sector, ranking 10th in the world for publications (2nd when adjusted on a per capita basis). Proper buy-in and investment from industry and the government at this key turning point would lead to a significant boost to the Australian regenerative medicine ecosystem, as well as early access to ground-breaking therapies for patients.

In the next part of the series, we discuss the historical origins of regenerative medicine.

The phase out of Australia’s innovation patent system caused a flurry of filing activity in 2021, so what are your options if you identify an innovation patent that affects your freedom to operate?

There was a spike in filing activity as part of the phase out of Australia’s innovation patent system, with over 2,700 innovation patents filed in August 2021 alone. With so many recently filed innovation patent cases, it is a good time to consider the available options if you identify an innovation patent that might affect your freedom to operate.

First, is there really a problem?

If you are worried about an innovation patent, it can be useful to get some early advice on the potential scope of the patent rights and, if necessary, the prospects for challenging validity. You may find that the patent claims do not cover your proposed commercial activities. Alternatively, you might get some clarity around a potential problem so that you can start developing a strategy to address it.

Tailor your strategy

If you identify a problematic innovation patent, it might be worthwhile to challenge that validity of it and we touch on some of the available options below. However, in some cases, you may prefer to negotiate with the patentee in order to reach a mutually beneficial commercial solution (e.g. licensing or assignment of the patent rights). Sometimes a validity challenge can be used strategically to encourage the patentee to come to the negotiating table, or to shift the balance in your favour during negotiations.

There is no single strategy that is appropriate in all circumstances. The best course of action for you will depend on your commercial goals and individual circumstances. The Griffith Hack team can assist you with developing a tailored strategy: feel free to contact us if you would like to discuss your options.

A granted (innovation) patent doesn’t always mean much

It is important to remember that innovation patent applications proceed to grant after only a formalities check. However, they do not become enforceable until they have completed substantive examination and been certified. If you are concerned that infringement proceedings might be commenced against you once an innovation patent has been certified, it may be beneficial to consider pre-certification options.

How likely is invalidity?

Requesting substantive examination of an innovation patent is voluntary. As a result, applicants sometimes take an “optimistic” approach to the subject matter being pursued. This may be done by some foreign applicants to take advantage of financial incentives in their country of origin. Alternatively, the underlying strategy may be for the granted (but uncertified) innovation patent to act as a deterrent to competitors, who might not go the additional step of seeking advice on whether the innovation patent is likely to stand up to scrutiny.

China’s utility model is a similar second-tier of patent protection to the innovation patent. Recent figures indicate that patent invalidation proceedings in China have been successful in a significant proportion of cases. Of the concluded invalidation proceedings for utility model patents in 2020, 39.2% of cases were invalidated entirely, 18.2% were invalidated partially, and only 42.6% of the challenged utility models were maintained.

Much is made of innovation patents being harder to invalidate due to the innovative step being a lower threshold than the inventive step requirement of standard patents. While it is true that the innovative step threshold is lower, it is not a free pass to validity. For example, it is important to bear in mind that innovation patents must meet the same validity requirements as standard patent cases for the level of disclosure in the patent specification. Recent case law indicates Australian patent specifications must now meet a higher standard, more aligned with UK and European requirements. With these recent developments in mind, it is wise not to take an innovation patent (especially an uncertified one!) on its face.

Pre-certification options

Third-Party Examination Requests

Sometimes the simplest way of dealing with a problematic case is to ask the Patent Office to look at it. Substantive examination of innovation patents is voluntary, but third parties can request that an innovation patent be examined. This can be done anonymously or by ‘strawman’. Both the third party and the patentee must pay an examination fee in relation to the third party’s examination request. If the patentee fails to pay this fee, the patent will cease. For patentees who filed an innovation patent with no real intention of having it certified, being asked to pay the examination fee may be enough to cause them to abandon the case.

Notice of Matters Affecting Validity

If you would like to enhance the likelihood of objections in examination, you can give the Patent Office a bit of help. It is possible to file a Notice of Matters Affecting Validity (NMAV). The NMAV can provide submissions (and supporting material) asserting that the claimed invention lacks novelty and/or an innovative step. The Patent Office is required to consider the NMAV when the innovation patent is examined (irrespective of who made the examination request).

You can file an NMAV at any time from when the complete specification for the patent becomes open to public inspection to immediately before the Commissioner decides to certify the patent. Again, this can be done anonymously or by ‘strawman’.

Post-certification options

After certification, a patentee can commence enforcement proceedings to assert their patent rights. Accordingly, it is important to consider the risk of the patentee commencing infringement proceedings when contemplating a post-certification challenge to the validity of an innovation. There are a number of different options available, and we recommend consulting with an IP professional to develop a strategy suited to your circumstances.

Re-examination

If the innovation patent has been examined and certified, that does not have to be the end of the matter. If you still have validity concerns, you can ask the Patent Office to re-examine the innovation patent. Again, this can be done anonymously or by ‘strawman’. Re-examination requests can address more grounds than an NMAV including written description requirements.

Re-examination can be considered a “passive” approach in that you provide information to the Patent Office and hope that they will use it wisely. If the Patent Office raises objections in the light of the re-examination request, the patentee will be given the opportunity to respond to the objections, but the party requesting re-examination does not have a formal opportunity to contest the patentee’s response. Re-examination can be a cost-effective option in circumstances where there are clear invalidity grounds.

Opposition

Alternatively, if it is strategically beneficial to take a more active approach to contesting the validity of an innovation patent, you can commence opposition proceedings before the Patent Office. In opposition proceedings, both the opponent and the patentee are given the opportunity to file evidence and make submissions in support of their respective cases. The opposition can proceed to a formal hearing, where each party can be heard and a hearing officer from the Patent Office will prepare a formal decision on the opposition. The grounds of opposition include the same grounds as re-examination.

Revocation

There is also the option of commencing revocation proceedings before the Federal Court. We do not suggest litigation lightly, but in some circumstances revocation proceedings can be the best approach. The grounds of revocation generally include the same grounds as for oppositions.

If you are dealing with nuanced technical issues or a complicated case, it may be beneficial to actively contest the validity of the innovation patent in opposition or revocation proceedings. As noted above, the best strategy will depend on the specific circumstances of any matter.

How we can help

Griffith Hack is a full-service specialist IP firm. We combine a highly experienced and technically diverse patents team with a legal team with a strong track record. At Griffith Hack, our attorneys and lawyers work together to provide you with commercially astute advice and execute a strategy tailored to your needs.

To discuss the available options, please contact a member of our team.

Cytec Industries Inc. v Nalco Company [2021] FCA 970

In a recent opposition appeal decision of the Federal Court of Australia, Nalco Company’s Australian patent application no. 2012220990 was found invalid for lack of support and lack of clear enough and complete enough disclosure (sufficiency).1

The decision highlights the Court’s approach in considering the meaning of claim terms that might on first glance be considered conventional, and emphasises the need to consider whether the claims are commensurate with the technical contribution provided by the specification. Toby ThompsonKathryn Morris, and Tim Fyfe discuss.

The technology

The technology of the application related to the “Bayer process”, an industrial process used to extract alumina from bauxite. Precipitation of aluminosilicate scale can occur during the process, forming obstructions and affecting efficiency. The patent application was directed to methods for reducing scale during the Bayer process, involving use of additive compositions containing certain small molecules.

Support and sufficiency

A key issue in the proceedings was the requirement in claim 1 for:

“a composition comprising at least one small molecule selected from the group consisting of compounds (I)…(LX) within a product mixture formed from the reaction of…”

The judge first decided that the language of claim 1 encompassed a composition made up of a single type of small molecule, alongside encompassing mixtures of small molecules. Such a finding is uncontroversial, and most practitioners would agree that it is common when drafting to use “at least one” to cover situations where either a single component or multiple components are to be protected.

Having arrived at that construction, the judge went on to hold that the claims lacked support as a result. The specification described the small molecules as being produced by the reaction of three components, which resulted in the production of complex mixtures of small molecules. However, there was no disclosure regarding how to produce a single small molecule, or how to separate components of the product mixture. Whilst embodiments of claim 1 involving mixtures of small molecules were supported, embodiments involving only a single type of small molecule were not.2

For similar reasons, the judge also found that the specification did not disclose the claimed invention in a clear and complete enough manner for it to be performed by a person skilled in the art (insufficient). Insofar as the claims included a product mixture made up of a single type of small molecule, undue experimentation was required to perform the invention.3

Vulnerability of claims containing conventional terms

The decision in Cytec v Nalco follows on the heels of MSD v Wyeth last year, where use of an apparently conventional drafting term also resulted in invalidity (see our article here). In that case, the term “comprising” resulted in claims directed to vaccine compositions being held to lack support, insofar as the claims encompassed vaccines having additional polypeptide-protein conjugates beyond the thirteen specified.4 The decision in MSD v Wyeth also cemented that evaluation of compliance with Australian support provisions involves assessment of the technical contribution to the art disclosed by the specification, and requires that the breadth of the monopoly claimed must be justified by that technical contribution.5

On the face of it, these decisions might cause concern that other patents containing similar commonly used claim terms might also be vulnerable. However, in both MSD v Wyeth and Cytec v Nalco, the decisions were heavily dependent on the facts. As discussed above, in Cytec v Nalco there was a lack of disclosure in the specification relating to production or isolation of single small molecule products. The expert evidence further indicated that a skilled person would not have known how to obtain a single small molecule. In MSD v Wyeth, the evidence supported that the selection of additional serotypes beyond the 13 specified in the claims would be a complex and difficult process. Given that, it should not be assumed that all Australian patents using terms such as “at least one” or “comprising” are likely to be considered to lack support or be insufficient.

However, these decisions highlight the approach of the Australian courts, not only in carefully considering the language of the claims, but in also evaluating whether all embodiments falling within the claims can be obtained based on the specification and the common general knowledge. We can also expect that challengers will continue to raise lack of support and insufficiency attacks in invalidity proceedings. As a result, particularly for cases where litigation may be anticipated, patentees should consider whether the claims of their patents reflect the technical contribution to the art.

Grace period applicable to “novelty-only” patent publications

An unsuccessful lack of novelty attack was also made by Cytec based on an earlier filed-later published “whole of contents” Nalco publication “WO 873”. In confirming that the Australian grace period provisions are applicable to such documents, the judge confirmed the position taken by the Australian Patent Office in recent years,6 providing additional clarity in this area.

The judge disagreed with the Opponent’s view that the 12-month grace period only applied to prior art documents which had already been published by the priority date of the claim, holding that a reading down of the words “publicly available” in section 24 of the Patents Act to exclude prior unpublished patent specifications from the grace period provisions, was unwarranted.

For more information regarding this case, or if you have questions regarding how to navigate Australia’s support and sufficiency requirements, please get in touch with a member of our team.


1Cytec Industries Inc. v Nalco Company [2021] FCA 970.

2Cytec Industries Inc. v Nalco Company [2021] FCA 970, [129]-[133].

3Cytec Industries Inc. v Nalco Company [2021] FCA 970, [149].

4Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477;

5Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477, [547].

6Biogen Idec MA Inc. [2014] APO 25; Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61

As foreshadowed in our recent article on Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 (Ono), the Federal Court of Australia has issued Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2021] FCA 947 (MSD), a further decision regarding patent term extension (PTE).

Whereas Ono considered PTE in the context of a pharmaceutical substance listed on the Australian Register of Therapeutic Goods (ARTG) by a third party prior to the patentee’s ARTG listing, MSD relates to PTE in the context of a patent that covers two or more pharmaceutical substances listed on the ARTG by the patentee or a related entity.

MSD had two pharmaceutical substances listed on the ARTG, both covered by claims of the one patent. Based on the pharmaceutical substance first listed on the ARTG, the patent was ineligible for PTE, because 5 years had not elapsed between the effective filing date of the patent and listing of the first pharmaceutical substance on the ARTG. However, based on the second pharmaceutical substance with the later listing on the ARTG, the patent was granted PTE, because greater than 5 years had elapsed between the effective filing date of the patent and that listing on the ARTG.

Merck Sharp & Dohme Corp. (MSD) initiated proceedings against Sandoz Pty Ltd (Sandoz) alleging threatened infringement during the PTE period. In response, Sandoz cross-claimed that the PTE based on the second pharmaceutical substance was erroneous and sought rectification of the patent register to indicate that the patent expired 20 years after its effective filing date.

MSD proposed a construction on the calculation of the extension of term with reference to Ono, effectively by replacing recitation of “s70(2)” in s77 with “s70(3)”. At [49], Jagot J noted that “MSD relies heavily on Ono at [118] and [144].” However, Jagot J was not swayed, not least in noting at [53] that:

All of the above paragraphs from Ono [relevant to MSD’s construction] are obiter dicta. The ratio of the case is confined to the answer Beach J gave to the issue of construction with which he was dealing, namely, as identified at [27]:

…whether an application for an extension must be filed within 6 months of the first inclusion in the ARTG of goods containing or consisting of any pharmaceutical substance falling with the claims of the patent:

  1. where the goods were those of the patentee (the applicants’ position); or
  2. irrespective of whether the goods were those of the patentee, that is, they could be the goods of a third party that had nothing to do with the patentee and, moreover, might be a competitor (the Commissioner’s position).

In short, Jagot J held that recitation of “earliest” in s77 relating to calculation of PTE duration meant exactly what is said. Therefore, the duration of PTE was to be calculated using the date of listing the pharmaceutical substance listed first on the ARTG, not the pharmaceutical substance listed second (or subsequently) on the ARTG. It followed that the term of the patent should not have been extended, or technically, the PTE should have been calculated as zero days.

Consequently, it remains best practice to pursue each pharmaceutical substance likely to be listed on the ARTG in a separate divisional application.

For more information, please contact Malcolm Lyons.

In a recent decision of the Australian Patent Office, Cytec Industries Inc. successfully defended its Australian Patent Application No. 2014370386 against all grounds of opposition.1 The decision highlights some key aspects of Australian patent oppositions, including the emphasis placed on expert evidence by the Patent Office when deciding on grounds such as inventive step, and the importance of formulating a clear position supported by the evidence in hearing submissions.

Griffith Hack were involved in the latter stages of CSIRO v Cytec, handling preparation of submissions and hearing strategy on behalf of Cytec.

Technology

The patent application concerned the production of polyacrylonitrile (PAN) polymer suitable for use in producing carbon fibre and having particular properties, including a requirement for high molecular weight and narrow polydispersity index. Claims were directed to a multi-step process for producing the polymer including the use of reversible addition/fragmentation chain transfer (RAFT) agents, and also to processes for producing carbon fibre from the polymer.

Straw Man Opponent

Any person can oppose grant of a patent application in Australia, and in CSIRO v Cytec the opposition was originally filed by a ‘straw man’ opponent. A so-called ‘straw man’ opposition usually involves an attorney or attorney firm opposing on behalf of somebody else – to conceal the identity of the true opponent. Opponent status was transferred to CSIRO late in the proceedings, after questions were raised about a possible association between some of the expert witnesses and the true opponent.

Expert Evidence

In Australian patent oppositions, providing strong expert evidence on matters such as common general knowledge or steps that a person skilled in the art (PSA) would have taken is often critical. The hearing officer will generally rely on such evidence rather than their own technical expertise. It is also preferable to involve independent experts where possible.

In CSIRO v Cytec the Delegate considered that, whilst one of the opponent’s expert witnesses had considerable expertise in RAFT polymerisation and a high level of inventive capacity, they were not truly representative of a polymer scientist of ordinary skill. Whilst the evidence was not excluded, consideration was given as to whether it went to the issue of what the common general knowledge was and what a PSA would do, rather than what the witness themselves knew.2

Two expert witnesses emerged as being employees of the true opponent, and a third was a director of a joint venture set up by the opponent. Concerns over the identity of the true opponent not being disclosed earlier in the process, and its impact on the value of the evidence, were also addressed by the Delegate.

He emphasised that the witnesses were provided with the Federal Court’s Expert Evidence Practice Note, and were aware of their role in providing relevant and unbiased evidence, and so their evidence was not disregarded.

However, it was also noted that at times declarants went beyond the role of providing evidence on technical issues. The Delegate further commented that, whilst witnesses will understandably disagree with each other, and may express those differences in strong terms, such statements can indicate a lack of objectivity or suggest that the witness is acting as an advocate. As a result, some of the evidence was approached with caution.3

Inventive Step

Alongside preparation of evidence, a key facet of opposition practice is the ability to set out a party’s case strongly in written and oral submissions, and to anticipate and respond to arguments made by the other side.

The main ground of opposition pressed at the hearing in CSIRO v Cytec was lack of inventive step. The Delegate agreed with Cytec’s position that the problem solved by the invention was the provision of PAN polymer suitable for use in producing carbon fibre, and having a low polydispersity and high molecular weight, preferring that to the opponent’s alternative problem of producing PAN polymer with low polydispersity.4

Further, Cytec’s position was preferred on a number of key issues, supported by their expert evidence, including that:

  • it was not common general knowledge that RAFT could be used to prepare PAN copolymers; and
  • there was a technical prejudice in the art that RAFT presented challenges in achieving the appropriate properties for PAN copolymers, namely achieving both high molecular weight and low polydispersity.5

Attention was also drawn to a contemporaneous paper published by CSIRO authors. The parties presented differing views as to what the paper taught, but ultimately the Delegate held that the document indicated that the manufacture of PAN polymers having high molecular weight and low polydispersity suitable for production of high quality carbon fibre presented challenges.6

Against that background, the claims were held to be inventive, both in the light of the common general knowledge alone, and the common general knowledge together with the cited prior art documents.

Final Thoughts

Since the Raising The Bar Amendments to the Patents Act 1990 came into force a number of years ago, Australia has become a more challenging jurisdiction for patent applicants requiring greater consideration of strategy than in the past. An opponent now only needs to prove their case on the balance of probabilities rather than demonstrating that the application is clearly invalid, and there are increased support and sufficiency requirements intended to align with UK and European provisions.

Whether an owner or a challenger, careful preparation of evidence and submissions is a key aspect of opposition practice. Factors important for success in Australian oppositions also include an understanding of the scientific and legal issues, developing an effective opposition strategy, and evolving that strategy as necessary as the opposition progresses.

When faced with an opposition, patentees should consider whether they have the best team to successfully defend the patent application. Transfer of the representative on an opposed application is allowable, and may be preferable for some high value cases and situations where opposition experience is essential.

How we can help

Griffith Hack has a patent attorney and legal team with a strong track record, not only in defending patent applications where we have been responsible for prosecution, but also in getting across the scientific and legal issues quickly, and delivering results when we are brought in specifically to handle the opposition.

To discuss patent oppositions further with a member of our team, click on their profile below.


Commonwealth Scientific and Industrial Research Organisation v. Cytec Industries Inc. [2021] APO 27.
2 Ibid, [36]. 
3 Ibid, [37]-[39].
4 Ibid, [63].
5 Ibid, [85}, [91].
6 Ibid, [100].

With Australia’s innovation patent system set to end later this month, pre-grant opposition proceedings will likely play a significant role in the strategies of challengers going forward – and owners will want to be prepared. Gavin AdkinsDr Toby Thompson and Amanda Stark discuss. 

Australia’s innovation patent system is ending soon. As a result, Australia’s pre‑grant opposition proceedings will likely play a more significant role in the strategies of patentees and challengers in the future.

Innovation patents are subject to a different ‘post-grant’ opposition procedure to standard patents that is stayed by the commencement of court proceedings. As a result, divisional innovation patents are sometimes used as a litigation tool in order to, among other things, short circuit the enforcement delay associated with the pre‑grant opposition procedure for standard patents. As the innovation patent system is phased out, this tactic will fall away.

Australia’s pre-grant patent opposition procedure is long-standing but has undergone some important changes in recent years that will become critical in the future.  These changes include higher requirements for several grounds of opposition, resulting in a less pro-patentee opposition regime than was previously the case.   

Lower burden of proof

Previously, in order to succeed in opposing grant of an Australian patent it was necessary for an opponent to establish that the patent, if granted, would be clearly invalid.

Now an opponent need only satisfy the Hearing Officer on the balance of probabilities that a ground of opposition to the grant of the standard patent is made out.

Stronger grounds for opposition

In respect of standard patent applications which are filed on or after 15 April 2013, or for which examination is requested after this date, there are four substantive changes that strengthen the grounds for challenging validity:

1. Broader prior art base for inventive step (obviousness)

Firstly, the background “common general knowledge” is no longer confined to that which existed in the art in Australia. In practice, this removes the need to use local Australian experts or otherwise prepare evidence in order to establish that the relevant art is ‘international’ in nature.

Secondly, in order for prior art to be eligible for assessing inventive step it is no longer necessary to establish that it must be “information that a skilled person […] could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant”. This removes another evidentiary obligation from an opponent and broadens the prior art base substantially.

2. US utility requirement

An express utility requirement was inserted to align with the US position such that “a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification”. This is in addition to the pre-existing requirement for the invention itself to be useful.

3. UK/European enablement and support requirements

The disclosure requirement for complete applications has been amended to conform substantially to the corresponding UK provision, such that the complete specification must “disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art”.

Further, the ‘old test’ for fair basis has been replaced with a requirement based on UK/European law that that the claims are “supported by” the description. The ‘old test’ for fair basis was essentially limited to a textual comparison between the claims and the body of the specification or priority document that did not involve any inquiry into ‘technical contribution to the art’.

4. Tighter restrictions on amendments

While not a ground for invalidity, patent applicants are not allowed to add matter that goes beyond the disclosure contained in the specification at its filing date, except to correct a clerical error or obvious mistake.

Strict time-frames for evidence

In the past, patent opposition proceedings in Australia often became protracted due to generous provisions relating to extensions of time for lodging evidence. This is no longer the case.

Evidentiary time periods are still extendable, but the regulations relating to extensions of time for evidentiary periods are now reasonably onerous and strictly applied by IP Australia. Unless a party can show that they acted promptly and diligently and made all reasonable efforts to file the evidence in time, an extension will not be granted.

The procedure from filing the Notice of Opposition to the issuance of a written decision on validity can now be completed within about 18 months, although extensions of time (where allowed), amendments and procedural disputes can extend this time-frame.

Use all available options

It is currently still possible to file new applications for innovation patents in Australia, until 25 August 2021. Even after that date, it will still be possible to file applications for innovations which are divisionals of existing applications filed before that date.  As a result, if your invention is of significant commercial value and is likely to be commercialised in the short to medium term, an 8-year term innovation patent may still be a useful option.

How we can help

Facing a pre-grant opposition in Australian is often a new experience for many patent owners, and opponents also.  Opposition practice is a specialised area of Australian patent law, particularly with regard to areas such as preparation of expert evidence, hearing preparation, dealing with procedural aspects such as amendment requests and extensions, and extending into commercial aspects such as settlement negotiations and licensing.

Griffith Hack’s experts have extensive experience in handling Australian patent oppositions. Our combined patent attorney and legal team provides integrated scientific and legal expertise, together with strategic, commercially-relevant insight, and has a proven track record in delivering results.

To discuss patent oppositions further with a member of our team, click on their profiles below.