High Court Decision in d’Arcy v Myriad Genetics Inc – Appeal Allowed

We have been waiting almost 30 years for a decision of this nature, on the issue of whether isolated DNA sequences are patentable subject matter. This case considered a patent claiming rights to isolated DNA sequences relating to the BRCA 1 gene, which is linked to increased susceptibility to breast and ovarian cancer in some women. Incidentally, that patent expired in August this year, so the decision itself will have no effect on the availability of BRCA 1 testing in Australia. Rather, what is important is its effect on the availability of patents in new areas of technology more generally. In three separate judgments, the court unanimously held that patent claims of this nature are invalid. My focus here is on the decision of the majority – Chief Justice French and Justices Kiefel, Bell and Keane. Their Honours’ judgment focused primarily on the informational nature of the isolated gene, in much the same way that the US Supreme Court judgment did in the equivalent case in that country. The Full Court of the Federal Court had earlier decided that it was the chemical nature of DNA that was important, and the act of isolation created sufficient chemical differences for there to be an ‘artificially created state of affairs’. Chief Justice French and his colleagues begged to differ, noting that ‘it is the existence of that information [the information stored in the DNA sequence coding for the gene] which is an essential element of the invention as claimed’. The majority provided further guidance on the application of the Australian subject matter requirement to new areas of technology. Essentially, their Honours said that in areas that open up new fields of patent protection, the patentable subject matter requirement involves more than simple application of the two factors that traditionally have been applied in Australia (whether there is an artificially created state of affairs and whether the invention has economic utility). Rather, it is necessary to consider a range of other factors such as the effect on innovation of opening up a new field to monopoly rights and the coherence of national and international patent law. This is perhaps the most exciting part of the judgment as it signals that the courts and the patent office need to look at broad public policy considerations when considering the appropriate bounds of patents. Time will tell how they rise to this challenge. (Posted by Dianne Nicol). 

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