Marlow Foods edible fungi patent amended but still obvious

QIP Nominees Pty Ltd v Marlow Foods Limited [2023] APO 19

17 April 2023

Australian Patent Office

Felix White

Highlight

This Patent Office decision on a post-RTB patent provides a useful overview of the steps involved in assessing patent validity, and specifically on law on sufficiency and support for post-RTB patents, and the importance of correctly identifying the inventive concept of the patent.

Background

Marlow Foods Limited (Marlow) was the applicant for Australian patent application no 2016211049, directed to an edible formulation comprising edible fungal particles of the filamentous fungus Fusarium and calcium ions, including 0 wt% of components derived from animals.  QIP Nominees Pty Ltd (QIP) filed a pre-grant opposition pressing the grounds of lack of manner of manufacture, inventive step, support, sufficiency, disclosure of best method, clarity and utility at the hearing.

The patent office found for the opponent, determining that most claims in the application lacked inventive step, a decision which was not appealed.  Dependant claims to the presence and amount of acetate were upheld and the patent proceeded to grant on 2 November 2023.

Key Issues

As the application was filed after 15 April 2013, the Patents Act 1990 (Cth) in its post-Raising the Bar (RTB) form applied.

The patent description stated that edible filamentous fungi had been previously used as meat substitutes, in formulations incorporating egg albumin as a binder so as to replicate the appearance and texture of meat.  The parties diverged as to problem to be solved by the invention, sometimes referenced as the “useful result” or the “outcome to be sought”, which is critical to the determination of inventive step according to the reformulated Cripps question.

The patent applicant Marlow characterised the problem to be solved as replacing egg albumin as a binding agent to produce a vegan variation of existing Fusarium products.  The opponent QIP submitted three alternative characterisations of the problem to be solved:

1. supplementing a vegan foodstuff with calcium;
2. no problem to be solved; and
3. providing firmness to a vegan foodstuff with alginate as a gelling agent.

Outcome

Inventive step

The Delegate outlined the modified or reformulated Cripps question as one way of assessing inventive step (as endorsed by the High Court in Alphapharm¹), namely:

Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?

He also referred to the Full Federal Court decision in Nichia², explaining that the desired result may also be characterised as the problem to the solved, and must be commensurate with the whole scope of the claims.

The Delegate found that the breadth of the claims encompassed a variety of products, including those containing only a small amount of the fungus (given the absence of any lower limit in the claims), vegan variations of existing Fusarium meat substitutes, and even intermediates or components used in the manufacture of such products.  As such, he considered Marlow’s approach to characterising the problem to be solved too narrow as it would not apply across the full scope of the claims, and at most would be relevant only to the examples.  The Delegate preferred QIP’s approach.

The key prior art document cited in the proceedings disclosed foodstuffs comprising edible filamentous fungi (including Fusarium), and hydrocolloids, preferable egg albumin or an alginate gel comprising calcium ions.  In applying the Cripps question to Marlow’s formulation of the problem to be solved, the Delegate found at least claim 1 obvious.  The Delegate found the obviousness position even stronger when applying at least one of QIP’s formulations of the problem: supplementing a vegan foodstuff.

The Delegate found that most of the remaining claims (all of which depend from claim 1) failed to contribute an inventive step: limitations to the amount of calcium were drafted in terms of amounts relative to the amount of fungi, or were otherwise not significant (amounts of other components, properties of the packaging or Fusarium, or methods of making the composition).  Certain dependent claims to the presence an amount of acetate were held to be inventive as they were stated in the specification to counter the disagreeable taste of calcium chloride.  The Delegate found that palatability was a technical problem and that no evidence had been led as to disclosure of acetate for this purpose in the prior art.

Sufficiency and support

The Delegate noted that both parties referred to Burley J’s decision in Merck³, the first Federal Court decision to consider the post-RTB support requirement, including his Honour’s restatement of principles derived from the decision of the Supreme Court of the United Kingdom in Regeneron⁴.

However the Delegate found these principles to be directed to a claimed invention which defines a product by its properties (specifically a range of features, as was the case in Regeneron) rather than a product defined simply by its constituent parts, as in the patent the subject of these proceedings.  (The application of these principles to an invention where a range of features is relevant is discussed in more detail in our summary of the Full Federal Court’s decision in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd on page).

According to the Delegate, the main issue for support was identification of the technical contribution of the application, said by Burley J in Merck to be the ability of the skilled person to make the product itself.   The With little discussion, the delegate found that QIP had not made out this ground of opposition.

The Delegate restated the test for sufficiency as endorsed in Merck:  Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?

QIP submitted that the starting material of mycoprotein paste (Fusarium mixed with calcium ions) was not commercially available.  The Delegate found that there is no legal requirement that the examples can be reproduced exactly – only that all products within the scope of the claim will, if made, deliver the same general benefit promised.  As to that benefit, consistent with his finding on the problem to be solved the Delegate found that given the claims were broad enough to encompass a large number of embodiments the problem solved was also broad, and was not limited to specific functional limitations such as palatability or texture.   As a result the sufficiency opposition ground was not made out.

Remaining grounds

QIP failed on the remaining grounds of manner of manufacture, clarity, best method and utility.

Implications

Opposition decisions can be a useful, albeit brief, primer on patent validity grounds and the correct approach to them, including claim construction, identification of the field, the common general knowledge and the skills and knowledge of the person skilled in the art.   In particular this decision provides a useful overview of the law on sufficiency and support for post-RTB patents, and the importance of correctly identifying the invention the subject of the patent.

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[1] Aktiebolaget Hassle v Alphapharm Pty Ltd (1981) 148 CLR 262 at 286
[2] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2
[3] Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477
[4] Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27.

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