Tag: Manner of manufacture

1
The Australian Patent Office Once Again Allows Claims Directed to Nucleic Acids
2
Nucleic Acids Remain Patentable in Australia
3
High Court of Australia Finds Claims for Isolated Genetic Material not Patentable Subject Matter
4
Business Method Patents in Australia: Mere Computer Implementation Not Enough

The Australian Patent Office Once Again Allows Claims Directed to Nucleic Acids

In Commonwealth Scientific and Industrial Research Organisation v BASF Plant Sciences GmbH [2016] APO 83, the Australian Patent Office has once again confirmed that nucleic acids are patentable in Australia.[1]

The opposed application relates to methods of producing polyunsaturated fatty acids in the seeds of transgenic plants. The application included claims directed to a recombinant nucleic acid molecule comprising nucleic acid sequences coding for a polypeptide with Δ6-desaturase activity, a polypeptide with Δ5-desaturase activity, a polypeptide with Δ6-elongase activity and a polypeptide with Δ5-elongase activity, as well as one or more copies of a promoter and a terminator.

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Nucleic Acids Remain Patentable in Australia

A recent Patent Office decision in Arrowhead Research Corporation [2016] APO 701 (“Arrowhead”) has confirmed that nucleic acids can still be patented in Australia.

Following the High Court of Australia’s ruling in D’Arcy v Myriad Genetics Inc [2015] HCA 352 (“Myriad”), the Australian Patent Office has been broadly objecting to claims that encompass isolated nucleic acids.  This practice has frustrated applicants and their attorneys who consider many of the objections to be reactionary, and not consistent with the facts and principles set out in Myriad. In a very recent decision, the Patent Office has confirmed that nucleic acids remain patentable subject matter in Australia by allowing claims directed to interfering RNA compositions.

In Myriad, the High Court clearly stated that it would not be concerning itself with “gene patents” generally, but with the disputed claims specifically (at [37]). Those claims defined isolated nucleic acids per se that were useful in the detection of breast cancer. While acknowledging that the claims defined a product created by human action, the High Court considered that the “substance” of the claims was information, which could not be the subject of a valid claim.

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High Court of Australia Finds Claims for Isolated Genetic Material not Patentable Subject Matter

On 7 October 2015, the High Court of Australia (High Court) issued its decision[1] in the long running dispute concerning Myriad Genetics, Inc.’s (Myriad) patent relating to an isolated nucleic acid coding for mutant or polymorphic BRCA1 polypeptide. Mutations in the BRCA1 gene can serve as indicators of a woman’s risk of developing breast cancer.

In a unanimous decision, the High Court found that claims directed to the isolated nucleic acid are invalid on the basis that they are not a ‘manner of manufacture’ and therefore not patentable subject matter. The High Court took the view that the claimed invention would extend the scope of the concept of “manner of manufacture” and that this was not something which was appropriate for courts to do. In light of the High Court’s decision, it will be interesting to see whether there is a legislative response to this issue.

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Business Method Patents in Australia: Mere Computer Implementation Not Enough

Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

On 10 November 2014, the Australian Full Federal Court (Court) held that a method of creating an index of securities using a standard computer was a ‘scheme’, and, hence, not a patentable invention.

The Court applied the Australian High Court test from National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 that a patentable invention must produce an “artificially created state of affairs”. The Court said that this test is not satisfied by mechanistic application of artificiality or physical effect, but by understanding the claimed invention as a matter of substance not form. Read More

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