D'Arcy v Myriad Genetics Inc [2014] FCAFC 115

D'Arcy v Myriad Genetics Inc [2014] FCAFC 115

Claim 1 was to an isolated nucleic acid, a tangible chemical compound, not to genetic information. The isolated nucleic acid was removed from the genome and the cell, could not be subject to natural cellular transcription and translation processes without artificial intervention, and was chemically, structurally and functionally different from its naturally occurring counterpart. It produced an artificially created state of affairs with admitted economic utility. Under Australian law, and applying NRDC, there is no exclusion for products of nature that would invalidate such a claim. The claimed product was therefore a manner of manufacture and an invention within s 18(1) of the Patents...

Jurisdiction
Australia
Judgment Date
05 September 2014
Procedural Posture
Patent Appeal / Appeal From Cancer Voices Australia V Myriad Inc [2013] FCA 65
Outcome
Appeal dismissed.
Legal Topics
['manner of Manufacture' 'patentable Subject Matter' 'isolated Nucleic Acid' 'brca1 Gene' 'patents Act 1990 (cth) S 18(1)' 'statute of Monopolies S 6']
['patents' 'intellectual Property'] ['manner of Manufacture' 'patentable Subject Matter' 'isolated Nucleic Acid' 'brca1 Gene' 'patents Act 1990 (cth) S 18(1)' 'statute of Monopolies S 6']

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Procedural Posture

Patent Appeal / Appeal From Cancer Voices Australia V Myriad Inc [2013] FCA 65

Legal Issues

  1. 1 ['Whether claims to a composition comprising isolated nucleic acid are for a manner of manufacture for the purposes of s 18(1)(a) of the Patents Act 1990 (Cth).' 'Whether isolated nucleic acid coding for a mutant or polymorphic BRCA1 polypeptide is materially different from naturally occurring nucleic acid in the human body.' 'Whether the claims are merely to a discovery, genetic information, a product of nature, or laws of nature rather than a patentable invention.']

Ratio Decidendi

Claim 1 was to an isolated nucleic acid, a tangible chemical compound, not to genetic information. The isolated nucleic acid was removed from the genome and the cell, could not be subject to natural cellular transcription and translation processes without artificial intervention, and was chemically, structurally and functionally different from its naturally occurring counterpart. It produced an artificially created state of affairs with admitted economic utility. Under Australian law, and applying NRDC, there is no exclusion for products of nature that would invalidate such a claim. The claimed product was therefore a manner of manufacture and an invention within s 18(1) of the Patents...

Court Disposition

Appeal dismissed.

Orders

  • ['The appeal be dismissed.']