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Myriad - Australia edition

Peter Leung, Washington DC

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.


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