Examination practice following the High Court decision in D'Arcy v Myriad Genetics Inc [2015] HCA 35

Overview

On 7 October 2015 the High Court delivered judgement in D'Arcy v Myriad Genetics Inc [2015] HCA 35.  

The decision related to Myriad's patent (686004) on the isolated nucleic acid encoding the BRCA1 mutant polypeptide and to methods of testing for the presence of mutations of the representative BRCA1 gene, and thus an increased likelihood of developing breast or ovarian cancer.  The High Court was asked to decide whether claims 1-3, directed to the isolated BRCA1 nucleic acid, defined patent eligible subject matter (i.e. a manner of manufacture).  

The High Court unanimously decided that claims 1-3 did not define a manner of manufacture.  The Court found that, while formulated as claims to a product (i.e. a nucleic acid molecule), the substance of the invention was the information embodied in the nucleotides of the molecule.  The Court decided that the information was an inherent part of the molecule and not created by human action.  The Court did not make any finding with respect to the remaining claims of the patent.  

The Commissioner has undertaken a consultation process, considered the feedback received, and finalised examination practice. 

 Overview of the consultation process 

The Commissioner considered the High Court’s decision, and on 16 October 2015 published draft examination practice for public consultation, inviting interested parties to make submissions by Friday, 6 November 2015.