Oils ain’t oils – amendments can rectify failure to include a best method…for now
BP International Limited v Neste Oil Oyj  APO 46
It is relatively rare that an opposition before the Australian Patent Office succeeds, in the sense of preventing the grant of a patent, solely on a ground relating to internal specification requirements. Under the law as it existed prior to the Raising the Bar (RTB) reforms which came into effect in April 2013, applicants and patentees were usually able to amend a specification which was internally deficient at filing to make it compliant by adding further description. The recent Australian Patent Office decision in the matter of BP International Limited v Neste Oil Oyj serves as a cautionary reminder that the opportunities to rectify otherwise fatal deficiencies in applications and patents will no longer be available for those applications and patents subject to the new legislation.
Neste’s patent application for biodiesel fuel compositions
Neste’s patent application as filed related to biodiesel fuel compositions, having improved low temperature performance, comprising hydrocarbon components produced by hydrogenation and isomerisation of biological raw material originating from plant, animal or fish oils. The only examples in the specification at filing related to the use of tall oil, of plant origin. During examination the claims were amended to limit the biological material to animal fat.
The application is subject to the law as it stood prior to the RTB reforms. Pre-RTB reform, the main limitation to amendment of a specification was that the amendment could not result in the claiming of subject matter not in substance disclosed in the specification as filed (and, for accepted claims, did not broaden the scope of the claims as accepted). This allowed for the common practice of amending the description to incorporate additional “new matter”, such as examples.
During the opposition process, the claims were amended to incorporate specific turbidity and cetane values for the hydrocarbon component produced (these values were disclosed in the specification as filed), and also to include several new examples which illustrated products having those properties and which were obtained by “hydrotreating” and isomerisation of “animal fat”. The source of the animal fat was not identified.
Neste’s failure to provide the best method of performing the invention
The requirement under section 40(2)(a) of the Patents Act 1990 (Cth) (pre-RBT reform) that a specification describe the invention fully, including the best method known to the applicant of performing the invention, is intended to prevent a person from securing the benefit of monopoly without giving to the public the corresponding consideration of the knowledge of the best method of performing the invention”1.
While BP opposed the application on numerous grounds, including manner of manufacture, novelty, inventive step, clarity and fair basis, on each of these grounds, the Hearing Officer appeared to readily find in favour of Neste. However, when it came to considering whether the applicant had included the best method known to it for performing the invention, the Hearing Officer found the specification to be non-compliant.
Although the specification did not provide any detailed information on how to hydrogenate and isomerise animal fats, the Hearing Officer accepted that the skilled person would understand how to do this without the need for detailed instructions. However, the Hearing Officer also concluded that the skilled person would understand that the composition of the starting animal fat would dictate the processing techniques used and control the nature of the ultimate product, and that in the absence of any indication of the source of the animal fat used to produce the hydrocarbon components having the claimed turbidity and cetane values, the specification did not contain a complete best method.
Amendments to rectify non-compliance possible
The Hearing Officer allowed Neste a two month period to propose amendments to overcome the deficiency. Pre-RTB reform, it had been a somewhat controversial quirk of Australian patent law, as developed by the courts2, that a specification, deficient at filing, could potentially be amended to ameliorate deficiencies relating to non-compliance with the full description, including best method. Such an amendment could conceivably even be made years after a patent was granted.
As the Neste application is subject to the law as it stood pre-RTB reform, Neste can now amend the specification by incorporating further information regarding the animal fat used in the Examples and thereby ensure that the specification is made compliant with section 40(2)(a).
Raising the Bar reforms close the door to “new matter” amendments
The ability to amend a deficient specification by introducing new subject matter to satisfy full description requirements subsequent to filing, and thereby allow a person to potentially secure a monopoly without necessarily first providing the necessary quid pro quo disclosure, is exactly the kind of situation which the RTB reforms sought to prevent. For applications and patents which are now subject to the new RTB provisions, i.e. any application, or patent arising from it, for which examination was requested on or after 15 April 2013, the ability to amend a specification is now considerably more restricted. Under the new provisions an amendment is not allowable at any time if, as a result of the amendment, the specification would claim or disclose matter that extends beyond the complete specification as filed, that is to say, adds new subject matter.
Lessons for patent applicants
The decision serves as a timely reminder that under the RTB reforms, previous opportunities to rectify deficiencies in non-compliant specifications will no longer be available and applicants must ensure that even where examples are included at filing, these provide the necessary details to allow the skilled person to perform the invention. In this particular instance, Neste has the benefit of the old law and, unless an appeal is filed by BP, the incorporation of information regarding the source of animal fat used in the Examples should allow the application to proceed to grant. Had the Neste application been subject to the RTB provisions, it would not have been possible to include the new examples and failure to disclose the best method may well have been fatal.
- American Cyanamid Company v Ethicon Limited (1979) RPC 215 at 269
- Pfizer Overseas Pharmaceuticals v Eli Lilly and Company  FCAFC 224