D'Arcy v Myriad Genetics Inc [2015] HCA 35

D'Arcy v Myriad Genetics Inc [2015] HCA 35

Claims 1, 2 and 3 of Australian Patent No 686004 are not patentable inventions under s 18(1)(a) of the Patents Act 1990 (Cth) because they claim isolated nucleic acids which embody genetic information that exists in nature and their patentability would extend the concept of 'manner of manufacture' beyond accepted limits; such claims are not inventions but the mere discovery of a naturally occurring product, even if isolated.

Parties
Appellant: Yvonne D'Arcy; First Respondent: Myriad Genetics Inc; Second Respondent: Genetic Technologies Ltd
Jurisdiction
Australia
Judgment Date
07 October 2015
Procedural Posture
Appeal / High Court Decision on Appeal From Full Court of Federal Court
Outcome
Appeal allowed.
Legal Topics
Patentability, Manner of Manufacture, Biotechnology Patents, Section 18(1)(a) Patents Act 1990 (cth)
Intellectual Property Patents Patentability Manner of Manufacture Biotechnology Patents Section 18(1)(a) Patents Act 1990 (cth)

Case Brief

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Parties

Yvonne D'Arcy

Appellant

Myriad Genetics Inc

First Respondent

Genetic Technologies Ltd

Second Respondent

Procedural Posture

Appeal / High Court Decision on Appeal From Full Court of Federal Court

Legal Issues

  1. 1 Whether claims 1 to 3 of Australian Patent No 686004, which claim isolated nucleic acid coding for specified BRCA1 mutations or polymorphisms, are patentable inventions under s 18(1)(a) of the Patents Act 1990 (Cth).
  2. 2 Whether such claims are a 'manner of manufacture' within the meaning of s 6 of the Statute of Monopolies.

Ratio Decidendi

Claims 1, 2 and 3 of Australian Patent No 686004 are not patentable inventions under s 18(1)(a) of the Patents Act 1990 (Cth) because they claim isolated nucleic acids which embody genetic information that exists in nature and their patentability would extend the concept of 'manner of manufacture' beyond accepted limits; such claims are not inventions but the mere discovery of a naturally occurring product, even if isolated.

Court Disposition

Appeal allowed.

Orders

  • Appeal allowed.
  • Paragraph 1 of the order of the Full Court of the Federal Court of Australia made on 5 September 2014 set aside; in its place, order that the appeal to the Full Court be allowed and paragraph 1 of the order of Nicholas J made on 15 February 2013 be set aside; in its place, order that claims 1, 2 and 3 of Australian...