Myriad - Australia edition

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

Myriad - Australia edition

Australia’s High Court held oral arguments today on the issue of whether an isolated gene is patentable

The patent in dispute in D’Arcy v Myriad Genetics is patent 686004 held by Myriad Genetics, the Australian version of the patent that was struck down by the US Supreme Court.

DK Catterns and PK Cashman appeared on behalf of D’Arcy and were instructed by Maurice Blackburn Cashman. D Shavin and C Dimitriadis appeared for Myriad and were instructed by Jones Day.

Back in September 2014, the Full Federal court found that the subject matter was patentable. Cancer Voices Australia challenged the validity of the patent, arguing that the isolated molecules were not materially different from the ones found in nature and thus the patent does not meet the manner of manufacture requirement as articulated in the seminal NRDC v Commissioner of Patents case.

In upholding the patent, the Full Federal Court discussed in detail the reasoning of both the US Supreme Court, which struck down Myriad’s patent, and the US Federal Circuit, which had held the subject matter was patentable. The Full Federal Court said that the Federal Circuit’s reasoning was more persuasive and had a “more detailed analysis of the underlying chemistry”. It also said that the Federal Circuit’s focus on the structure and functioning of the isolated molecule was more appropriate and consistent with the approach required by Australian law. The Full Federal Court contrasted this with the Supreme Court’s approach, which was more focused on the information contained in the molecule.

Click here for Managing IP’s analysis of the Full Federal Court’s decision.

more from across site and SHARED ros bottom lb

More from across our site

Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Powell Gilbert’s opening in Düsseldorf, complete with a new partner hire, continues this summer’s trend of UPC-related lateral movement
IP leaders at Brandsmiths and Bird & Bird, who were on opposing sides at the UK Supreme Court in Iconix v Dream Pairs, unpick the landmark case and its ramifications
Gift this article