Supply of
Essential Oils
Infringes Method
of Treatment Claims
A recent Federal Court decision 1 has shed light
on the patentability of naturally-derived essential
oils, as well as the applicability of s 117 of the
Patents Act to method of treatment claims.

6 Background
The Patent
Method Of Treatment Claims
Mr Hood, the applicant, filed the
patent in suit, Australian Patent
No 721156 entitled ‘Essential oil
and methods of use’, after finding
several native shrubs growing on
his Tasmanian farm. One of these
shrubs, Kunzea ambigua of the
Myrtaceae family, yielded an oil that
Mr Hood tested among friends and
family and anecdotally appeared
to have antimicrobial and anti-
inflammatory properties. Mr Hood
had Kunzea ambigua essential oil
listed on the Australian Register of
Therapeutic Goods (ARTG) for the
treatment of various conditions
including influenza, arthritis, and
muscular aches and pains.

Mr Hood sued several parties
for infringement of the patent,
alleging that the respondents
supplied Kunzea ambigua essential
oil to commercial customers. In
response, the validity of the
patent claims was challenged.

The proceedings were combined
and heard together in 2018.

In its broadest form, the claimed
invention was an ‘essential oil
derived from shrubs of the genus
Kunzea’. The claims include several
other product claims together
with various method of treatment
claims that use such an oil. Claim
5, the broadest method claim, was
directed to a method of treatment
in which the essential oil is applied
topically to relieve pain, minimize
bruising, or to assist in healing.

The respondents contended that
the method of treatment claims
were invalid on the grounds that
they claimed a ‘known use of a
known material’ and also that
they lacked an inventive step.

There is a very long history of
Australian Aboriginal people using
native plants for medicinal purposes,
including to treat infections, skin
problems, colds and nasal conditions.

Evidence showed that approximately
70% of essential oils come from
around 12 plant families. One of the
most well-known Australian essential
oils in October 1996 (the priority date)
was tea tree oil, which is derived from
several plants of the Myrtaceae family
and was known to be useful in the
treatment of various ailments. However,
no evidence presented showed that
Kunzea ambigua had been previously
used for therapeutic purposes.

The Court found that as the evidence
did not establish that an essential oil
derived from Kunzea ambigua had
been used for therapeutic purposes
before the priority date, the method
1 Product Claims
Early in the proceedings, the
applicant accepted that product
claims 1 to 4 were invalid on the
basis that they lack novelty. Because
of this, the Court acknowledged
it was unnecessary to rule on
whether those claims are also invalid
because they were not for a manner
of manufacture. The Court did note,
however, that it was highly arguable
whether the raw oil extracted from
Kunzea ambigua was sufficiently
different from a product of nature to
qualify as patentable subject matter.

Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686 (23 November 2020)
Inspire March 2021
By Annabella Newton PhD



of treatment claims were not a
known use of a known material.

By the priority date, it had been
established which chemical
compounds in tea tree oil were the
active ingredients. In their inventive
step arguments, the respondents
tried to show that Kunzea ambigua
essential oil contained many of the
same active ingredients as tea tree oil,
and it would therefore be obvious that
Kunzea ambigua essential oil would be
suitable for use in the treatment of a
similar range of ailments as tea tree oil.

However, the Court considered this line
of reasoning to be based on ex post
facto analysis that did not explain why
the skilled person would have been
drawn to consider Kunzea ambigua as
a potential therapeutic agent in the first
place, much less analyse an essential
oil derived from Kunzea ambigua in
the expectation that it would also
provide a useful treatment. The Court
therefore concluded that the method
of treatment claims were inventive.

Infringement By Supply
Mr Hood contended that the
respondents Kunzea ambigua
essential oil was supplied to
commercial customers rather
than directly to consumers. The
infringement case was therefore
based on s 117 of the Patents
Act, which states that if the use
of a product by a person would
infringe a patent, then the supply
of that product by one person to
another is an infringement of the
patent by the supplier, as long as
it can be shown that the recipient
would use the product in a way that
would infringe the patent. This may
be because the product only has
one reasonable use, or because
the product was supplied with
instructions or inducement to use
the product in a way that would
infringe, such as an advertisement.

The Court found that some of the
alleged infringers had supplied Kunzea
ambigua essential oil to customers
with advertisements and other
marketing material which suggested
the oil is useful in the treatment
of conditions which fall within the
scope of the method of treatment
claims. The Court considered that
this did provide an inducement to
the customer to use the oil in a way
that would infringe that patent.

Conclusions The decision highlights that
claims to products sourced
directly from plant and animal
species, such as essential oils,
may not be sufficiently different
from nature to qualify as patentable
subject matter in Australia.

Methods of treatment using
these naturally-derived products
may be considered patentable
subject matter although these
claims may still fail for lack of
novelty or inventive step. This
decision also demonstrates how
infringement by supply under
s 117 of the Patents Act can apply
to method of treatment claims.

Inspire March 2021
7 Dr Annabella Newton | Senior Associate
MChem(Hons) MCommrclLaw PhD AMRSC MRACI GAICD
annabella.newton@pof.com.au