Accensi Pty Ltd v Nufarm Limited - [2014] APO 57

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accensi Pty Ltd v Nufarm Limited [2014] APO 57

Patent:2002325065

Title:Glyphosate composition

Patentee:  Nufarm Limited
Opponent:  Accensi Pty Ltd
Delegate:  Dr S.D. Barker
Decision Date:  5 August 2014
Hearing Date:  21 July 2014, in Canberra
Catchwords:  PATENTS – opposition under section 104 – whether alleged deficiencies arise as a result of the amendment – opposition fails

Representation: Patent applicant: Mr Ben Fitzpatrick of counsel, assisted by Mr Christopher Schlicht, patent attorney of Phillips Ormonde Fitzpatrick
Opponent:Mr Paul Whenman, patent attorney of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2002325065

Title:Glyphosate composition

Patent Applicant: Nufarm Limited
Date of Decision: 5 August 2014
DECISION
The opposition fails. Subject to appeal, the amendment is allowed.
I award costs according to Schedule 8 against Accensi Pty Ltd.
REASONS FOR DECISION

Patent number 2002325065 was granted on 23 June 2011. The patentee is Nufarm Limited (Nufarm). A request to re-examine the patent was filed by Accensi Pty Ltd (Accensi) on 10 February 2012. Amendments that were filed in response to the re-examination were advertised, and an opposition to the amendments was filed by Accensi. A hearing was conducted in Canberra on 21 July 2014.
The opposition
The statement of grounds and particulars identified two grounds of opposition: lack of compliance with sections 102(1) and 102(2)(b). Both grounds were argued at the hearing.
The parties relied upon evidence by several declarants. Evidence in support consists of a declaration by Mirsad Ahmetagic. Evidence in answer consists of a declaration by Phillip Maxwell Hay. Evidence in reply consists of a further declaration by Mirsad Ahmetagic.
The law on amendments
The grounds for opposing an amendment are that the amendment is not allowable under section 102. Changes to section 102 as a consequence of the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2011 do not apply to the present specification because the request for examination of the present application was made before 15 April 2013.
The relevant provisions of section 102 are as follows:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
The key issue for the present matter is the expression "as a result of the amendment". This was discussed by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38] in relation to section 102(1) (and the same applies to section 102(2)):
"Consideration of the prohibition in s 102(1) of the Act requires a comparison between what would be claimed as a result of the proposed amendment and what is disclosed in the specification as filed. The steps involved in this comparison were described in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466C-E. As there emphasised, the key point is that the words 'as a result of the amendment' in s 102(1) are not to be confused with the expression 'after the amendment'. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is 'in substance disclosed' in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable."
It is the difference between the specification as it stands and as it is proposed to be amended that must be considered.
The specification
The specification relates to the herbicide N-phosphonomethylglycine, commonly known as glyphosate. Specifically, the specification discusses the improvement in the bioefficacy of glyphosate obtained by the use of combinations of low molecular weight non-amphiphilic cations (e.g. sodium, potassium, ammonium, isopropylammonium).
The amendments, and how they came to be
The specification has been re-examined following a third party request by Accensi. The amendments were proposed as part of the response to the re-examination.
The first re-examination report
On 19 April 2014 a re-examination report issued stating the claims 1, 3-6, 13-16, 22 and 24 were not novel and lacked inventive step in the light of WO 1992/011764 (D1). There was a separate objection that claims 17-21 and 25 lacked inventive step in the light of D1
The first response
On 24 May 2014 Nufarm responded with submissions and amendments. The claims were distinguished from D1 on a number of bases.
First, it was stated that D1 does not teach or suggest a glyphosate concentration of more than 120 g/l. The submissions made to the Commissioner said:
"In view of the technical problems associated with combining glyphosate and fatty acids or their salts with glyphosate at high concentrations, it is not obvious and indeed, may not be technically feasible to produce a stable composition containing potassium fatty acid salt and IPA-glyphosate with a glyphosate concentration of at least 360 g/L (based on glyphosate acid)."
The second re-examination report
On 7 June 2012 a re-examination report issued maintaining objection that claims 18-20, 27-31, 33, 37 and 38 lack inventive step in the light of D1
The second response
On 25 July 2012 Nufarm responded with submissions in rebuttal.
The third re-examination report
On 6 August 2012 a re-examination report issued maintaining the objections raised in the second re-examination report.
The third response
On 25 September 2012 Nufarm responded with submissions and a further statement of proposed amendments. On 9 October 2012 a report issued stating that the examiner considered that the amendments, once allowed, would overcome the objections raised in the previous report.
The alleged deficiencies in the claims as amended
The amendments make a number of changes to the description and the claims. Below I quote the amended claims that have been objected to, and explain the objections that have been taken. In quoting the claims as proposed to be amended, new text is shown underlined and deleted text is shown struck through. The key question is whether the alleged deficiencies in the claims as proposed to be amended arise as a result of the amendment. If they do not arise as a result of the amendment, then there is no ground of opposition.
Claim 1
Claim 1 as proposed to be amended reads:
A glyphosate composition in the form of an aqueous solution comprising a mixture of potassium salts and isopropylammonium salts of glyphosate, wherein the glyphosate concentration (based on glyphosate acid) is at least 360 g/l.
It was argued that this claim lacks fair basis (and thus offends section 102(2)(b)) as it does not include the following limitations:
that it must be free of a fatty acid surfactant,
that the composition is stable, and
there is no upper limit on the concentration of glyphosate.
Each of these alleged deficiencies was present in the claim before amendment. The claim before amendment can include a fatty acid surfactant as this is not excluded. The claim before amendment makes no reference to stability of the composition. The claim before amendment sets no upper or lower limit on the concentration of glyphosate. Consequently, even if there is a lack of fair basis, it is not "as a result of the amendment".
It was also argued that the claim lacks fair basis (and thus offends section 102(2)(b)) as it relates to concentrated glyphosate, rather than dilute compositions. This argument is based on the view that the invention is only those compositions that deliver enhanced bioefficacy in use, and the concentrate is diluted prior to use. While I do not accept the logic that underpins this argument, it is unnecessary to consider it as the alleged deficiency does not arise as "as a result of the amendment".
The same issues were also advanced as the basis of an assertion that the claim claims matter not in substance disclosed (and thus offends section 102(1)) because it does not include the following limitations:
that it must be free of a potassium fatty acid surfactant,
that the composition is stable, and
there is no upper limit on the concentration of glyphosate.
It follows that this alleged deficiency does not arise "as a result of the amendment".
Finally, I have considered whether the amendment might be seen as fundamentally changing the nature of the invention as claimed, so that it no longer claims matter that was in substance disclosed in the specification as filed. This argument is based on a submission made during the re-examination process (quoted above in paragraph [12]).
Accensi argue that this passage means that a concentration of 360 g/l or greater has technical significance when preparing a composition of IPA-glyphosate and potassium fatty acid, since such a composition is not technically feasible. The present claim is not directed specifically to such a composition, and there is no suggestion in the description that Nufarm have prepared such a composition. However, the claim is broad enough to include such a composition if a fatty acid surfactant is included. If Accensi are correct in the way that they characterise the above quotation, then that part of the claim would lack utility. While that could raise serious issues in a different action, it is not relevant to the present opposition. For present purposes, it is not reasonable to characterise this as a change in the nature of the invention. There is nothing in this that is relevant to the present opposition.
There is no valid opposition to claim 1 as proposed to be amended.
Claim 2
Claim 2 as proposed to be amended is a new claim:
A glyphosate composition according to claim 1, wherein the glyphosate concentration (based on glyphosate acid) is at least 450 g/l.
Objection to claim 2 mirrors that to claim 1. For the same reasons, there is no valid opposition to claim 2.
Claim 3
Claim 3 as proposed to be amended is a new claim:
A glyphosate composition according to claim 1, wherein the glyphosate concentration (based on glyphosate acid) is in the range of from 360 to 600 g/l.
Objection to claim 3 mirrors that to claim 1. For the same reasons, there is no valid opposition to claim 3.
Claim 4
Claim 4 as proposed to be amended is a new claim:
A glyphosate composition according to claim 1, wherein the glyphosate concentration (based on glyphosate acid) is in the range of from 450 to 600 g/l.
Objection to claim 4 mirrors that to claim 1. For the same reasons, there is no valid opposition to claim 4.
Claim 7
Claim 7 as proposed to be amended is a variation of existing claim 5:
A glyphosate composition according to any one of claims 1 to 6 ~~claims 1 to 4~~ wherein the molar ratio of isopropylammonium to potassium cations is the range of from 30:1 to 1:10.
The only significant change to claim 7 is the appendancy. As there is no valid opposition to the independent claim 1, there is no valid opposition to claim 7.
Claim 8
Claim 8 as proposed to be amended is a variation of existing claim 6:
A glyphosate composition according to any one of claims 1 to 6 ~~claims 1 to 4~~ wherein the molar ratio of isoproylammonium to potassium cations is in the range of from 30:1 to 1:10.
The only significant change to claim 8 is the appendancy. As there is no valid opposition to the independent claim 1, there is no valid opposition to claim 8.
Claim 15
Claim 15 as proposed to be amended is a variation of existing claim 14:
A glyphosate composition according to any one of claims 1 to 3 ~~claim 1~~ wherein the number of moles of potassium cation in the composition is from 3 to 50% based on the number of moles of glyphosate (determined as glyphosate acid).
The only significant change to claim 15 is the appendancy. As there is no valid opposition to the independent claim 1, there is no valid opposition to claim 15.
Claim 16
Claim 16 as proposed to be amended is a variation of existing claim 15:
A glyphosate composition according to any one of claims 1 to 15 ~~claims 1 to 14~~ further comprising a surfactant.
The only significant change to claim 16 is the appendancy. As there is no valid opposition to the independent claim 1, there is no valid opposition to claim 16.
The alleged deficiencies in the body of the description
Finally, it was argued that, as a result of the amendment, the specification does not fully describe the invention as it does not provide a description of the following features of the invention:
the composition is free of a fatty acid surfactant,
the composition is stable, and
the upper limit of the concentration of glyphosate.
It is true that the specification as proposed to be amended does not include reference to these matters. However, these alleged deficiencies do not arise "as a result of the amendment". Consequently there is no valid ground of opposition on this basis. It is not necessary to express an opinion on whether these features should be included in the description.
Conclusion
I conclude that the deficiencies raised in the opposition do not arise as a result of the amendment. The opposition fails.
Costs
The parties submitted that costs should follow the event. I see no reason to depart from that result. Costs should be awarded against Accensi.
Dr S.D. Barker
Delegate of the Commissioner of Patents