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

News of an alliance between two Malaysian law firms and the launch of a self-help video aimed at supporting IP professionals through menopause were also among the top talking points
Speakers at the EUIPO’s IP Mediation Conference discussed how lawyers can act in tandem with clients during mediation, and the importance of showing a united front
A report that revealed top legal LinkedIn influencers are generating hundreds of thousands in advertising value is the push lawyers need to up their social media presence
Speakers at the EUIPO’s Mediation Conference say mediation can offer a ‘cathartic’ and effective alternative to litigation that IP owners should consider
Partner Scott Sudderth says he is looking forward to building strong client relationships and expanding the firm’s patent practice
Find out which firms secured the most nominations for Managing IP’s Asia-Pacific Awards 2025, ahead of the winners being revealed on November 6
Raluca Vasilescu joins our ‘Five minutes with’ series to discuss patent mining and watercolour painting
Jan Phillip Rektorschek, founding partner at Pentarc in Germany, explains why the firm broke away from Taylor Wessing and discusses its plans for staying competitive
Royal Mail Group wins copyright and database right infringement case, in a dispute that can be linked to the history of postcodes in the UK
Managing partner Mark O’Donnell explains why people are at the centre of the Australian outfit’s investment focus and how being independent benefits the firm
Gift this article