Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH

The appeal involves the Commonwealth Scientific and Industrial Research Organisation (CSIRO) and BASF Plant Science GmbH, centred on a dispute regarding the production of long-chain polyunsaturated fatty acids through the use of transgenic organisms. CSIRO filed a patent application concerning genes from unicellular algae that code for enzymes. BASF contested this, leading to a Commissioner of Patents' decision which CSIRO appealed. The crux of the legal issue was whether the amended patent specification, which included a stipulation of preference for the conversion of alpha linolenic acid over linoleic acid, was allowable under the Patents Act 1990 (Cth). Specifically, the court had to determine if the amendment introduced added matter that extended beyond the original specification, which would contravene section 102(1) of the Act.

The court examined the meaning of "substrate specificity" within the context of the patent and assessed whether the amendment introduced intermediate generalisation. The court referenced analogous tests from foreign jurisdictions, such as section 76(2) of the Patents Act 1977 (UK) and Article 123(2) of the European Patent Convention, to aid in interpreting section 102(1) post the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). The court concluded that the amendment did indeed introduce added matter and amounted to an impermissible intermediate generalisation. Therefore, the amendment extended beyond the scope of the original specification.

Consequently, the court allowed the appeal and set aside the Commissioner's decision dated 10 December 2018. The court ordered that within 21 days of the date of the decision, the parties must file and serve proposed minutes of orders and short submissions (limited to 3 pages) regarding any necessary consequential orders, including the question of costs. The entry of orders is governed by Rule 39.32 of the Federal Court Rules 2011.