Ruling notes no evidence backs allegation of lack of inventive step
Australia’s Federal Court has allowed an appeal against the patents commissioner delegate’s refusal to permit a patent application to proceed to grant, upon determining that the respondent had failed to discharge its onus to establish any grounds of opposition.
In v2food Pty Ltd v Provectus Algae Pty Ltd [2026] FCA 436, the appellant applied for a patent relating to food colouring agents. The respondent opposed the grant of the patent under ss 59 and 60(1) of the Patents Act 1990 (Cth).
On 23 January 2026, a delegate of the commissioner of patents upheld the respondent’s opposition based on the absence of an inventive step and refused to allow the appellant’s patent application to proceed to grant.
The appellant appealed under s 60(4) of the Patents Act.
The appellant cited Commonwealth Scientific and Industrial Research Organisation v Urrbrae Foods Pty Ltd [2025] FCA 1591 (CSIRO), in which the judge urged an appellant to file evidence notwithstanding the opponent’s or the commissioner’s lack of participation.
On 5 March 2026, the respondent filed a submitting notice. On 11 March 2026, the commissioner told the appellant that he did not plan to participate in the hearing or the appeal.
The Federal Court of Australia set aside the delegate’s decision, dismissed the respondent’s opposition to the appellant’s patent application, allowed the application to proceed to grant, and issued no cost order, pursuant to the appellant’s proposed orders.
For an appeal under s 60(4), in the absence of evidence supporting any ground of opposition, the court explained that it should deny the opposition, allow the appeal, and let the patent application proceed to grant. The court accepted that a future challenge could assail the patent’s validity.
The court pointed out that the respondent did not file any evidence in the proceeding, while the commissioner did not actively engage in the appeal.
The court ruled that the respondent, who bore the burden of showing the absence of an inventive step or other grounds of opposition, filed no evidence or material in this proceeding to support any of the grounds.
The court noted that the delegate’s determination in CSIRO that the patent was invalid flowed from a lacuna in the patent applicant’s evidence, not from an acceptance of the opponent’s evidence.
Unlike in CSIRO, the court explained that the delegate in this case found invalidity based on the respondent’s evidence relating to an inventive step. Without that evidence in the present proceeding, the court saw no avenue to uphold the opposition to the grant.
Regarding the appellant’s criticisms of the delegate’s reasoning regarding an inventive step, the court considered it unnecessary and inappropriate to address the merits without any response or evidentiary support for the opposition.
