Australia: Genes ruled unpatentable by High Court

The High Court in D'Arcy v Myriad Genetics [2015] HCA 35 has unanimously found that isolated naturally-occurring nucleic acids coding for mutant or polymorphic genes does did not amount to patentable subject matter in Australia.

The Court overturned the findings of all the lower courts judges and diverged from its own expansive earlier authorities on patentable subject matter, preferring instead to follow US Supreme Court authority on the same case.

The court used emotive arguments in attacking the claim breadth. The majority citing "the chilling effect of the claims ... which would lead to the creation of an exorbitant and unwarranted de facto monopoly…". The jurisprudential reasons for having the patent system and the patentee's right to the broadest possible claim were not given significance.

The basis of rejection of the patent further included "the far reaching questions of public policy ... best left for legislative determination". The Court failed to recognise that its own actions are likely to lead to confusion and uncertainty as to the metes and bounds of the "new gene" patent exclusion.

In a manner reminiscent of US Supreme Court practice, a number of judges also incorporated obviousness arguments into the concept of patentable subject matter.

Of course, the net effect is that it is now more difficult to obtain protection for innovative research in the genetics area, likely leading to the serious consideration of secrecy regimes where protection is no longer available.

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