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