Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

Myriad gene patent survives challenge in Australia

In a Federal Court ruling, Justice John Nicholas held that isolated genetic material is patentable in Australia

Cancer Voices of Australia had challenged Myriad Genetics’ patent on the isolated nucleic acid coding for a mutant or polymorphic BRCA1 polypeptide, arguing that the subject matter was not patentable. Section 18(1)(a) of the Patents Act states that invention must be of “a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” in order to be patentable. Cancer Voices claimed that the isolated DNA and RNA were naturally occurring and thus not patentable.

Justice Nicholas disagreed, noting that the controlling case, National Research Development Corporation vs Commissioner of Patents (the NDRC case), held that this criteria is satisfied if the invention consists of an “artificially created state of affairs”, is discernible over time, and has economic significance. Even if the material is naturally occurring as Cancer Voices asserted, the endeavour required in isolating the genetic material can be understood as an artificially created state.

The other criteria of discernibility and economic significance were not at issue. Cancer Voices did not assert that the invention was not new or lacked inventive step.

The United States Supreme Court has agreed to review the patentability of the same BRCA1 as well as the BRCA2 sequences patented by Myriad, after the Court of Appeals for the Federal Circuit held that the isolated sequences were patentable under section 101. The Supreme Court is expected to issue its ruling by the end of the year.

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making