Australian Courts Confirm Status Quo for Patenting Gene Sequences

Today, a five-judge bench of the Full Court of the Federal Court of Australia unanimously decided that Myriad Genetics Inc’s (Myriad) patent covering the isolated BRCA1 gene (Patent) is valid.

 In Yvonne D’Arcy v Myriad Genetics Inc & Anor (5 September 2014) the Full Federal Court rejected the reasoning of the U.S. Supreme Court, when it found in 2013 that certain claims of a closely related U.S. Patent of Myriad were invalid as the claim to isolated nucleic acid was a claim to a “product of nature” and not patentable subject matter.

For the pro-patent lobby and the biotech industry, this is good news for innovation in life sciences in Australia.

By its decision the Full Federal Court has spared Australia upheaval in this industry and protection of IP in the industry.

By contrast, the current furore in the United States continues after the Myriad and Mayo v. Prometheus decisions in that country. There have been heated responses to the USPTO’s guidance memorandum issued in in March this year (Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products and designed to implement a new procedure) released in an attempt to address the changes in the law relating to subject matter eligibility.

We will wait with anticipation over the next 28 days to see whether the opponents of gene patenting, like the applicant in this case, the group ‘Cancer Voices, will push the matter on and seek to obtain special leave to take the issue one step higher to the High Court of Australia.

It would be reasonable for the High Court to decline to partake of this debate but leave it in the hands of the legislature (which has declined so far to be fired up by substantial agitation in recent years that it do so!).

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