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

The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Andrew Blattman reflects on how IP practices have changed and shares his hopes for increased AI use and better performance on the stock market
The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
Gift this article