Nalco Company v Cytec Industries Inc [2026] FCAFC 72

This was a long-running patent fight between Nalco Company and Cytec Industries Inc about an Australian patent application for reducing aluminosilicate scale in the Bayer process. The Bayer process is used to extract alumina from bauxite. The judgment explains that scale build-up is a serious industrial problem because it can reduce efficiency, interfere with heat exchange, force equipment offline for cleaning, and increase operating cost and safety risk.

That commercial setting matters. This was not a dispute about a consumer product or a simple mechanical device. It concerned industrial chemistry and process technology used in large-scale refining operations. Chemical additives were already used in the Bayer process, including anti-scalants, and both parties operated in that technical and commercial space.

Nalco filed the patent application in February 2012, claiming priority from February 2011. The application was accepted and advertised, but Cytec opposed the grant in 2015. The opposition raised several grounds, including novelty, inventive step and compliance with the disclosure and support requirements in the Patents Act. A delegate of the Commissioner found against Nalco on sufficient disclosure and support, and also found several claims lacked clarity and novelty.

The dispute then moved into the Federal Court. Cytec appealed from the parts of the delegate’s decision on which it had not succeeded, and Nalco cross-appealed. Nalco also amended the claims in 2019. Even so, the primary judge later held in 2021 that the claims, as then before the Court, still failed for lack of sufficient disclosure and lack of support. Nalco then sought a further amendment to address the construction problems identified by the primary judge. In 2024, that amendment application was refused. Nalco then sought leave to appeal both the earlier substantive determination and the later amendment refusal.

The Full Court had to deal with two connected but distinct questions.

First, was the primary judge right in the earlier decision to conclude that the claims, in the form then before the Court, failed the statutory requirements for sufficient disclosure and support under ss 40(2)(a) and 40(3) of the Patents Act 1990 (Cth)? The extract shows that those findings depended principally on claim construction. One identified issue was whether the claims included within their scope a reaction product mixture containing a single type of small silane molecule. That mattered because if the claims were read broadly enough to cover embodiments the specification did not properly teach across the whole area claimed, the claims could fail.

Secondly, the Full Court had to decide whether Nalco’s proposed amended claims should be allowed. That raised the amendment provisions in ss 102, 105(1A) and 105(4). The primary judge had held that the proposed amended claims still suffered from disclosure and support defects and therefore were not allowable. The primary judge had also said that, even if the amendments had been allowable, discretion would not have been exercised in Nalco’s favour.

So the Full Court was not simply reviewing one all-or-nothing patent validity ruling. It had to consider the original claim position and the later proposed amended position separately. That distinction is one of the most useful parts of the case for business readers.

The Full Court granted leave to appeal in relation to both substantive determinations. It then split the result.

On the earlier principal decision, the Full Court dismissed Nalco’s appeal. That left in place the primary judge’s conclusion that the claims, as then construed and then framed, lacked sufficient disclosure and support. In other words, Nalco did not succeed in overturning the adverse findings about the original claim position.

On the amendment decision, however, the Full Court allowed Nalco’s appeal. It set aside the orders refusing the amendment application, granted Nalco’s amended interlocutory application dated 23 December 2022, and ordered that Australian patent application no 2012220990 proceed to grant in the form annexed to that amendment application. The Court also ordered Nalco to serve the orders on the Commissioner of Patents and stayed the operation of the grant-related orders for 28 days, subject to further order.

The Court also directed further written submissions on costs questions, including costs in the Full Court and costs relating to the amendment issue before the primary judge. So while the substantive result on amendment was final enough to allow the application to proceed to grant in amended form, some costs issues were left to be dealt with on the papers.

The key practical distinction is this: the Full Court did not say the original claims were fine after all. It said the original appeal failed, but the amendment appeal succeeded. Businesses should read the case as an example of a patent application surviving through an amended path to grant, not as a vindication of the original claim wording.

The Full Court expressly explained why it decided the amendment question itself instead of sending it back to the primary judge. It said that was more efficient. The Court noted that it had the choice of remitting the matter, but the parties were content for the Full Court to address the issue directly.

The Court also recorded that the parties made submissions and provided material pointing to the relevant evidence and discretionary considerations that had already been raised before the primary judge. Importantly, no party argued that the primary judge had any greater advantage in dealing with that evidence, including cross-examination material. That made it easier for the Full Court to decide the amendment issue for itself.

The Court also said that the primary judge’s reasons on the ambit of the power in s 105(1A) raised questions of principle that needed elaboration, and that the Full Court adopted a different emphasis on that power. So the decision to determine the amendment issue itself was not just procedural convenience. It was also tied to the Court’s view that the amendment power and its discretionary operation required appellate clarification.

For businesses, this part of the case shows that amendment disputes can involve both technical claim drafting and broader legal questions about how the amendment power should be used. In the right case, an appellate court may decide the amendment issue itself if that is the more efficient course.

This case is a practical reminder that a patent specification has to do real legal work. It is not enough for the invention to be commercially useful or scientifically interesting. The specification must support the claims and disclose the invention clearly and completely enough for the skilled person to perform it across the area claimed. If the claims are read more broadly than the technical teaching can justify, the application becomes vulnerable.

The case also shows that claim construction can decide everything. Here, the construction issue about whether the claims covered a reaction product mixture containing a single type of small silane molecule was central to the support and sufficient disclosure analysis. Businesses often focus on novelty or inventive step, but this decision shows that support and enablement-style issues can be just as commercially decisive.

Another practical lesson is that amendment strategy should be planned early. Nalco ultimately succeeded in obtaining an amended path to grant, but only after years of opposition and court proceedings. That is expensive, slow and uncertain. A business that identifies a claim construction risk early may be able to manage it more efficiently than one that waits until after an adverse judgment.

Finally, businesses should keep the original and amended positions separate in their own internal decision-making. If the original claims are under attack, management should ask two different questions. First, can we defend the claims as they stand? Secondly, if not, is there an amended claim set that is legally available and commercially worthwhile? This case shows those questions can produce different answers.

The judgment highlights how much patent disputes depend on documents and procedural steps over time. The key documents here included the complete specification, the claims in their original and amended forms, the opposition materials, the delegate’s decision, the appeal documents, and the later amendment application under s 105(1A). Each stage changed the shape of the dispute.

The conduct of the parties also mattered. Cytec opposed the grant and pursued appeal points from the delegate’s decision. Nalco responded not only by defending the application but also by seeking amendments, first in 2019 and later again after the primary judge’s 2021 construction findings. By the time the matter reached the Full Court, the litigation had become both a challenge to the original adverse findings and a separate fight about whether the application could still be salvaged through amendment.

For businesses, that means patent disputes should be managed as a sequence of connected decisions, not as a single hearing. The wording used in the specification, the way amendments are framed, and the timing of those amendments can all affect whether the application survives.

The Full Court gave judgment on 26 May 2026. It granted leave to appeal from both the earlier principal decision and the later amendment decision. The appeal from the principal decision was dismissed. The appeal from the amendment decision was allowed. The amendment application was granted, and the patent application was ordered to proceed to grant in amended form, subject to a 28-day stay and further steps including service on the Commissioner of Patents and submissions on costs.

As a result, the case stands as a published Full Court authority on support, sufficient disclosure, claim construction and the amendment power under the Patents Act in the context of a patent application rather than an already granted patent.