The Australian Patent Office has released, and invited
public consultation on, its proposed revision of examination
practice in view of the High
Court Myriad gene patent ruling. A copy of the guidelines can
When the Australian High Court Myriad decision was handed down,
there was speculation that it may be viewed in a similar manner to
the US Supreme Court Myriad ruling, which was interpreted by the
United States Patent and Trademark Office as excluding from
patentability all isolated biological material. The Australian
Patent Office, however, has taken a narrow view of the High
Court's ruling, limiting patent ineligible subject matter
Naturally occurring human and non-human nucleic acid sequences
encoding polypeptides or functional fragments thereof –
either isolated or synthesised;
Naturally occurring human and non-human coding RNA –
either isolated or synthesised; and
Importantly, under the proposed examination practice the
following subject matter is considered to be patent eligible:
Transgene comprising naturally occurring gene sequences
Vectors/microorganisms/animals/plants comprising a
The proposed new practice appears to validate the majority of my
analysis of the High Court decision (found
here), which concluded that naturally-occurring material other
than genes should remain patent eligible in Australia. On the other
hand, the revised Patent Office practice does propose to broadly
exclude cDNA from patentability. In my view, this is an incorrect
interpretation of the High Court decision. The Commissioner of
Patents has invited interested parties to comment on her proposed
practice revisions and Shelston IP will, of course, keep you
promptly informed of developments.
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.
Shelston IP ranked one of Australia's
leading Intellectual Property firms in 2015.
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