The Importance of Evidence in Patent Oppositions: Shanghai Lytone Biochemicals, Ltd v Fresh Inset S.A. [2026] APO 10

Introduction

The Australian Patent Office (APO) decision in Shanghai Lytone Biochemicals, Ltd v Fresh Inset S.A. [2026] APO 10 provides a reminder of the importance of evidence in Australian patent opposition proceedings, particularly under the post‑Raising the Bar regime. The case is notable not for any controversial point of law, but for its clarity: arguments on inventive step are likely to fail without supporting evidence, regardless of how appealing they may appear.

In dismissing the opposition, the Delegate reinforced a consistent theme in recent life sciences oppositions: the onus lies squarely on the opponent to establish, on the balance of probabilities (post-RTB), that the claimed invention lacks an inventive step, and this burden cannot be met by submissions alone. 

The Opposed Application

The opposition concerned Australian patent application no. 2019258844, titled “Compositions and articles comprising complexes of 1‑methylcyclopropene and alpha‑cyclodextrin”, to Fresh Inset S.A. The invention relates to compositions for controlled release of 1‑methylcyclopropene (1‑MCP)—a compound well known for inhibiting ethylene responses in plant products, typically used for delaying ripening of fruits through complexation with α‑cyclodextrin.

The claimed invention addressed a practical problem in agricultural and horticultural storage: providing a controlled release of 1‑MCP gas upon exposure to moisture, enabling improved shelf life of fruits and vegetables. While both 1‑MCP and cyclodextrin complexes were known in the art, the application claimed a particular combination with defined release characteristics and formulation parameters.

Australian Patent Oppositions

In Australia, patent applications are open to opposition following acceptance (prior to grant). A third party has three months from advertisement of acceptance to file a Notice of Opposition. The opponent must then file a Statement of Grounds and Particulars (SGP) within three months, followed by Evidence in Support (EiS) within three months. Following this the applicant has three months to file Evidence in Answer (EiA), and subsequently the opponent has two months to file Evidence in Reply addressing the EiA.

After the evidence rounds close, either party may request a hearing. Written and/or oral submissions follow, after which a Delegate of the Commissioner issues a written decision.

The Opposition and Grounds Raised

In the present case, Shanghai Lytone Biochemicals, Ltd opposed the grant of the patent on a single ground only: lack of inventive step under section 7(2) of the Patents Act 1990 (Cth).

Crucially, the opponent filed no EiS of the opposition, relying only upon particulars outlined in the SGP and two key prior art documents, and written submissions. No expert declarations, experimental data or other evidence were presented to establish what constituted common general knowledge (CGK) at the relevant priority date.

The applicant also filed no evidence in answer but did file written submissions. As a result, the matter proceeded with the Delegate left to assess whether the opponent’s bare submissions were sufficient to discharge its evidentiary burden.

Inventive Step Requirements

Post‑Raising the Bar inventive step considerations include:

1. the CGK at the relevant date;
2. the differences between the claimed invention and the prior art base; and
3. whether those differences would have been obvious to a person skilled in the art (PSA), in light of CGK alone or CGK combined with the prior art information available to the skilled person.

As is shown in the present decision, evidence is critical, particularly where inventive step arguments depend onwhether certain modifications would have been routine, which features are to be considered CGK, i, if the PSA would have been motivated to combine known features in the claimed way, and/or if there was a reasonable expectation of success.

The Delegate’s Decision

The Delegate dismissed the opposition in its entirety, finding that the opponent had failed to establish a lack of inventive step on the balance of probabilities.

A central feature of the decision was the absence of any evidence from the opponent. The Delegate emphasised that assertions about what the PSA would have found obvious or routine are questions of fact; not matters that can be assumed or accepted merely because they sound plausible.

Without expert evidence establishing the relevant CGK or explaining why the claimed combination would have been obvious to try with a reasonable expectation of success, the Delegate was not satisfied that the statutory test was met.

Further, it was highlighted by the delegate that the above deficiencies could not be remedied by simply ‘cherry picking’ key features from one or more prior art with an assertion that such features are within the CGK.

The Delegate also noted that under the post‑RTB standard, it is not sufficient to show that an invention could have been arrived at by workshop variation; the opponent must demonstrate that it would have been obvious to do so, a finding that almost invariably requires expert testimony in chemical, biotech and life sciences cases.

Practical Implications for Chemical, Biotech and Life Sciences Patent Oppositions

The decision has clear implications for opposition matters particularly in chemical, biotech and life sciences cases:

1. Inventive Step Requires Evidence

Opponents should assume that inventive step cases will likely fail without expert declarations, even where the technology differences appear incremental. Assertions about routine experimentation, optimisation, or predictable outcomes must be grounded in evidence, ideally in the form of an expert declaration.

2. CGK Must Be Proven

CGK is not self‑proving. In technically complex fields, opponents must put forward evidence explaining what the PSA knew at the relevant date and how they would have approached the problem in light of this knowledge.

3. Submissions Alone Introduce a High Risk of Failure

This case illustrates the strategic risk of running a “submissions‑only” opposition. Even if the applicant files no evidence in answer, the opponent is unlikely to succeed unless its own case is proven by evidence.

Conclusion

Shanghai Lytone Biochemicals v Fresh Inset [2026] APO 10 provides an important example of the requirements of evidence in patent oppositions. Notably, this decision confirms that:

• the burden of proof in opposition proceedings rests on the opponent;
• attorney submissions are not a substitute for expert evidence; and
• the Patents Act does not permit a Delegate to speculate about what the PSA might/might not have done, in the absence of evidentiary support.

For chemical, biotech and life sciences opponents, the message is unambiguous: If your case depends on what the PSA would have done, thought, or expected, whether alone or in combination with relevant prior art (i.e. inventive step)—you must prove it.

For expert advice on patent oppositions contact MBIP. Our skilled team of attorneys is experienced in this area and will be happy to assist you.

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