Myriad gene patent survives challenge in Australia
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Myriad gene patent survives challenge in Australia

In a Federal Court ruling, Justice John Nicholas held that isolated genetic material is patentable in Australia

Cancer Voices of Australia had challenged Myriad Genetics’ patent on the isolated nucleic acid coding for a mutant or polymorphic BRCA1 polypeptide, arguing that the subject matter was not patentable. Section 18(1)(a) of the Patents Act states that invention must be of “a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” in order to be patentable. Cancer Voices claimed that the isolated DNA and RNA were naturally occurring and thus not patentable.

Justice Nicholas disagreed, noting that the controlling case, National Research Development Corporation vs Commissioner of Patents (the NDRC case), held that this criteria is satisfied if the invention consists of an “artificially created state of affairs”, is discernible over time, and has economic significance. Even if the material is naturally occurring as Cancer Voices asserted, the endeavour required in isolating the genetic material can be understood as an artificially created state.

The other criteria of discernibility and economic significance were not at issue. Cancer Voices did not assert that the invention was not new or lacked inventive step.

The United States Supreme Court has agreed to review the patentability of the same BRCA1 as well as the BRCA2 sequences patented by Myriad, after the Court of Appeals for the Federal Circuit held that the isolated sequences were patentable under section 101. The Supreme Court is expected to issue its ruling by the end of the year.

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article