ToolGen Incorporated v Fisher (No 2) [2023] FCA 794

Federal Court of Australia

ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 File number: NSD 1909 of 2018

Judgment of: NICHOLAS J

Date of judgment: 14 July 2023

Catchwords: PATENTS – appeal against decision of delegate of Commissioner of Patents upholding opposition to patent application ("PA") for compositions and methods using the CRISPR/Cas9 system for genome editing in eukaryotic cells – identity of person skilled in the art ("PSA") – whether PSA comprises a team including a microbiologist with expertise in CRISPR/Cas system in prokaryotes – meaning of phrase "nucleic acid encoding a guide RNA" in the claims – interrelationship between independent claim and dependant claim – whether dependent claim lacks clarity due to inconsistency between it and independent claim – whether priority document ("P1") provides an enabling disclosure of the invention as required by s 43(2A) of the Patents Act 1990 (Cth) ("the Act") – whether invention disclosed by P1 when read in light of the common general knowledge at date of filing of P1 – whether certain publications were common general knowledge at date of filing of P1 – whether disclosure clear enough and complete enough for invention to be performed by a person skilled in the art – whether work required of PSA would be an undue burden – consideration of priority date – whether claims lack novelty or do not involve an inventive step at the deferred priority date – whether PA provides an enabling disclosure of invention of the claims as required by s 40(2)(a) of the Act – whether work required of PSA would be an undue burden – whether claims supported by matter disclosed in specification as required by s40(3) of the Act – consideration of who should determine the appellant's foreshadowed application to amend the specification Held: dependent claim lacks clarity – invention of claims not disclosed by P1 – no enabling disclosure by P1 of invention of claims – work required of PSA would be an undue burden – claims not entitled to priority based on P1 claims – claims lack novelty and/or do not involve an inventive step – no enabling disclosure by PA of invention of claims – claims not supported by matter disclosed in the specification – any application to amend the specification should be heard and determined by the Court