Opposition on a Thin Specification
Marram Grass Bio Pty Ltd holds Australian standard patent 2021123456 for 'a method of treating salinity-affected soil comprising applying a composition comprising a microbial consortium and a chelating agent'. The specification has 6 pages: two paragraphs of general description, one example using a consortium of four named organisms with EDTA at 5 mM, and claims 1-14. Claim 1 covers any microbial consortium and any chelating agent at any concentration. Claim 9 covers concentrations 'from 0.1 mM to 1 M'. The specification says nothing about why the combination works. A competitor, Saltbush Ag, files opposition after acceptance, citing: (i) a 2019 journal article disclosing the same four organisms with EDTA at 5 mM for heavy-metal remediation; (ii) a 2020 patent disclosing the four organisms for salinity; (iii) common general knowledge that EDTA chelates metal ions. Saltbush also alleges the claims lack fair basing on the provisional and are not useful.
1. Assess the novelty and inventive step attacks claim-by-claim, and identify which claims are most vulnerable.
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Novelty (s 18(1)(b)). Claim 1 is a genus ('any microbial consortium', 'any chelating agent', 'any concentration'). A prior disclosure of a species within the genus destroys novelty of the genus claim unless the genus is a large selection not fairly described by the prior art (Advanced Building Specialties; the 'reverse infringement' and 'clearly disclosed' tests). Document (i) discloses the same four organisms with EDTA at 5 mM for a different purpose. Purpose is generally irrelevant to novelty of a method claim where the steps are the same - but the claim is to treating salinity-affected soil, and (i) is for heavy-metal remediation. If the method steps are identical and the soil type overlaps, claim 1 is anticipated. Realistically, claim 1 is highly vulnerable: the prior art discloses a species falling within it.
Claim 9 (0.1 mM–1 M) is a sub-range of claim 1. Document (i)'s 5 mM falls within it, so claim 9 is also anticipated unless the endpoint selection is novel and purposive. It is not.
Inventive step (s 18(1)(b) and s 7(2)-(3)). Even if novelty survives on purpose, combine (i) or (ii) with common general knowledge (iii): a skilled person seeking a salinity treatment would obviously try the known consortium and the known chelator. The specification gives no mechanism and no comparative data, so there is nothing to rebut the prima facie obviousness. Under the Aktiebolaget Hässle / Olin Mathieson approach, an unexpected effect must be demonstrated; here none is asserted.
Most vulnerable: claims 1-9 (broad genus, anticipated or obvious). Most defensible: any claim limited to the four-organism consortium at 5 mM EDTA in saline soil with the example's measured effect - but even that is close to (i). The 'fair basing' and 'usefulness' attacks are weaker: usefulness (s 18(1)(c)) requires only a specific, substantial and credible utility, and the example provides it for the narrow embodiment; fair basing (s 60) applies to pre-acceptance amendments, not to the original filing.
2. Draft the amendment strategy you would recommend to Marram Grass, including the statutory limits on amendment and the risk of opposition to the amendment.
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Recommended amendments.
- Claim 1 - narrow to 'a method of treating salinity-affected soil comprising applying a composition comprising the four named organisms [list] and EDTA at 0.5–50 mM'. This is the worked example.
- Delete claims 2-9 (the broad genus and the wide concentration range).
- Add a dependent claim to the measured effect in the example (e.g. reduction in exchangeable sodium percentage of at least 20% after 8 weeks), if the data supports it.
- Add a consistory/utility statement to the description explaining the mechanism (chelation of Na+ and improved microbial colonisation) only if supported by the original disclosure - otherwise it is added matter (s 102).
Statutory limits.
- s 102 (added matter): the amendment must not claim matter not in substance disclosed in the specification as filed. The narrowed claim is a subset of the original genus and is supported by the example, so it should pass. Adding a mechanism not in the original text risks s 102.
- s 97 / s 98: amendment after acceptance is allowed but is subject to the Commissioner's discretion; the amendment must not be made for an improper purpose.
- s 105: the Commissioner may refuse an amendment that would not be allowable if made before acceptance.
- s 114: no amendment may be made that would result in the specification claiming matter not in substance disclosed.
Opposition to the amendment. Under s 104, a person may oppose an amendment. Saltbush could argue the narrowed claim is still not novel over (i) if the four organisms plus EDTA at 5 mM is identical, and could argue added matter if the mechanism is inserted. The amendment opposition is a second front, so the strategy should be to amend to the minimum necessary to escape the prior art and to keep the mechanism out unless it is clearly supported.
Fallback. If the amendment is refused, consider withdrawing and refiling a fresh application directed to the example, accepting the loss of the priority date - but only after checking whether any intervening publication would then destroy novelty.