CSIRO’s Wheat Taste of Victory – Finding of Unsupported Patent Claims Overturned in Unopposed Appeal

Commonwealth Scientific and Industrial Research Organisation v Urrbrae Foods Pty Ltd [2025] FCA 1591 (16 December 2025)

Introduction

Justice Beach of the Federal Court of Australia has granted an appeal by CSIRO overturning the APO decision that CSIRO’s patent application number AU 2017292900 (the Application) was invalid due to lack of support.  In the appeal, CSIRO adduced expert evidence not put before the APO Delegate which Justice Beach was satisfied demonstrated that the specification, in the eyes of a skilled person armed with the common general knowledge, did provide proper support for the claims.  CSIRO had been given an opportunity to amend the Application to narrow the claims commensurate with the APO’s decision on lack of support but chose instead to appeal.  The opponent, Urrbrae Foods, did not participate in the appeal, did not file any evidence, and did not challenge CSIRO’s new expert evidence.  The Commissioner of Patents was granted leave to appear but did not appear at the appeal.

Key issue

As noted in our previous report, the central issue was whether the claimed invention—wheat grains exhibiting high amylose and fibre content—was enabled and supported across the full scope of the claims, or whether the disclosure only enabled and supported claims to wheat grains from specific genetic backgrounds.  The Delegate held that while the specification enabled production of grains meeting the claimed parameters in Sunco and Westonia strains of wheat, it provided no guiding principle for extending those results to other genetic lines such as EGA-Hume. The Delegate further noted that, while the specification lists a number of possible genetic backgrounds into which the triple null mutation could be introduced, it did not provide any indication that success in achieving the claimed phenotype is likely in those strains.  Justice Beach noted, in particular, the Delegate’s statement that:

The specification does not show production of any wheat grain within the scope of the claims in the EGA-Hume line.  While it may be conceivable that this could be achieved upon further work, or even repetition of the experiment disclosed in the specification, the specification provides no basis to expect that it would be obtainable.

[Emphasis added]

That “basis to expect” that the Delegate considered was missing from the specification was subsequently proven to exist by the new evidence submitted on behalf of CSIRO from Professor Peter Sharp, an emeritus professor at the University of Sydney with a PhD in genetics and over 40 years’ experience working in the field of wheat breeding, including breeding varieties of wheat with particular nutritional properties.

Justice Beach summarised Professor Sharp’s evidence, saying:

“[T]the evidence now filed in the appeal before me establishes that to the person skilled in the art equipped with the common general knowledge, the patent application provides a proof of principle, such that it would appear reasonably likely to such a person that the claimed grain could be made in a range of different genetic backgrounds, including EGA Hume”

Beach J noted that as a matter of law:

“[A] patent applicant does not need to demonstrate in the patent application “that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made.”  Further and consistently, it was said in another context that the disclosure need not include specific instructions as to how all possible component variants within the relevant functional definition should be obtained”

[Citations omitted]

As part of his evidence, Professor Sharp explained that, while the specification described experiments with EGA Hume variety wheat which failed to produce grain with the claimed features, these experiments were limited in scale.  Given the probabilities involved in wheat breeding, and other natural variation, Professor Sharp would expect further larger scale experiments with EGA Hume to succeed in producing grain as described in the patent claims.

Outcome and implications

In the absence of any challenge to his evidence, Justice Beach accepted Professor Sharp’s evidence and allowed the appeal, overturning the APO decision and allowing the Application to proceed to grant with the claims as originally accepted.  No order was made on costs.

Although one must be cautious in drawing conclusions from uncontested cases, this decision reinforces that support does not require working examples across the entire breadth of the claim. What matters is whether, to the skilled person armed with common general knowledge, the specification provides a credible technical basis or proof of principle that the invention will work across the claimed scope.  It also highlights the value of providing expert evidence that assists in establishing such a principle of general application.  In this case, the appeal was a valuable opportunity to revisit this issue and submit further important evidence.

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