In a companion case to the "gene patenting" dispute
presently before the U.S. Supreme Court, Myriad Genetics, Inc.
successfully defended the patent-eligibility of "gene
patents" in Australia. In Cancer Voices et al. v. Myriad
Genetics Inc. et al. [
Myriad] the Federal Court of Australia held that a claim that
covers an isolated naturally occurring nucleic acid – either
deoxyribonucleic acid (DNA) or ribonucleic acid (RNA) – is
patentable provided that the other requirements for patentability
have been met.
The Challenged Claims
The challenged patent entitled "In vivo mutations and
polymorphisms in the 17q-linked breast and ovarian cancer
susceptibility gene" claims isolated polynucleotides
comprising all, or a portion of the BRCA1 locus or of a mutated
BRCA1 locus. The polynucleotides can be RNA, DNA, cDNA and
synthetic forms. The invention also includes detection methods,
isolated antibodies, and screening methods.
In reaching its holding, the Australian court reviewed the
relevant case law in Australia and the United States and its
application to the patenting of products of nature. The court
highlighted prior decisions where the technology may depend on the
operation of natural laws or the natural properties of the
materials involved. Similar to Judge Lourie's reasoning in the
companion U.S. case [see prior post of
August 16, 2012], the Australian court focused on the isolated
nature of genetic material. Isolated or purified nucleic acids, the
court reasoned, is the product of human intervention. Moreover, the
court placed importance on the long standing practice of patenting
isolated DNA in Australia and other countries. The court also
determined that it would be difficult, on any rational basis, to
confine the holding of this case to patenting in other fields, such
as the patenting of pure and isolated chemicals that occur in
nature; where the consequences of such are unknown.
Myriad and the biotechnology community now wait for the U.S.
Supreme Court's review of the patent-eligibility of human
genes. Oral argument is expected in April. Stay tuned.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
What happens if a patient, particularly a mental health patient,.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).