Information relating to novelty-destroying prior use should not be disregarded in Australia. It is typical for documentary disclosures (such as a patent specification or scientific paper) to be used to allege that a patent claim lacks novelty. Under the Patents Act 1990, an anticipatory disclosure includes prior art information made publicly available through doing an act before the earliest priority date of a patent claim – otherwise known as “prior use”. Prior use is generally not raised as prior art during examination, but rather in contested disputes such as oppositions or litigation where a third party has knowledge of the act. In Nuseed Pty Ltd and Norddeutsche Pflanzenzucht Hans-Georg Lembke KG v Limagrain Europe [2025] APO 25, the Opponent, Limagrain Europe, was able to partially invalidate claims on the basis of lack of novelty in view of the prior use of a seed.

The application in dispute broadly relates to the field of breeding oilseed rape, otherwise known as canola. The invention relates to a plant having a genetic profile which, inter alia, confers a pod shattering tolerance phenotype to the plant. The advantage of this tolerance phenotype for commercial growth is reduction in the ability of a pod to shatter and thus release seed – this trait is undesirable in commercial growth as the seed is intended to be harvested.

The Hearing Officer commenced the novelty assessment with reiteration of the novelty test, being the reverse infringement, and clear and unmistakable directions tests as follows:

“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.”

The heart of the novelty issue in this case was whether prior use of the alleged seeds (and thus plants) is an enabling disclosure.

Guiding principles of what constitutes an enabling disclosure with regard to prior art information in the form of an act is set out in Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 (Damorgold) as follows:

“The onus lies on the party seeking to establish an enabling disclosure”

“… in order to establish lack of novelty through doing a single act, it is necessary to establish that the prior art information was made publicly available through the doing of that act”

“The act must have made the claimed invention publicly available. This means that it is accessible to at least one member of the public in circumstances where that person would be free in law and equity to make use of it as that person saw fit”

“The issue is whether what the skilled addressee observes on inspection is sufficient to enable him or her to comprehend the complete invention”

Taking Damorgold into consideration and noting that Damorgold related to a mechanical invention, the Hearing Officer considered that in the context of plant breeding, all that a person of skill in the art requires to make a plant is to grow the plant from seed, assuming that the seed has the genetic information required to produce an infringing plant. The threshold question was:

“So in the present case I think it is sufficient to ask whether seeds having the claimed SNPs were available, free in law and equity, to a member of the public before the priority date.”

Two seeds were at issue: DK Excellium and CR51. Evidence by an expert witness showed that in relation to DK Excellium, the samples were for experimental purposes and were free of charge. In the Hearing Officer’s opinion, “when samples are provided in this fashion they are limited to experimental purposes only. Therefore this does not satisfy me on the balance of probabilities that the Excellium seeds tested were sold free in law and equity.”

In contrast, a purchase order before the priority date showed the purchase of 396 kilograms of CR51 at 15 Euro per kilogram: “This I take to mean that the seeds were freely available to purchase. I can therefore consider the CR51 seeds tested in Table 2 of Abaddi2 to be part of the prior art base for novelty.”

That is, the purchase order rendered the CR1 seeds part of the prior art base.

Since the CR51 seeds would have inevitably made a plant with the properties of claim 1, the reverse infringement test is enlivened, thus depriving claim 1 of novelty on the basis of prior use. Other claims related to the seeds and agricultural uses lacked novelty insofar as including the integers of claim 1.

This decision shows the nuance embedded in the issue of an anticipatory disclosure by prior use. It is not enough that the prior art article was available. It must also be an enabling disclosure. Decisive to the Hearing Officer’s decision was whether the potential prior art information was accessible, free in law and equity, to at least one member of the public before the priority date of the claim in question.