Patent eligibility in Australia: the winding road ahead

As well as much other debate, the High Court’s decision in D’Arcy v Myriad Genetics has created uncertainty in terms of the patent eligibility of naturally occurring molecules other than DNA, says Tania Obranovich, special counsel at Watermark Intellectual Asset Management.

In the highly anticipated decision in D’Arcy v Myriad Genetics, handed down earlier this month, the High Court of Australia has unanimously held that isolated naturally occurring DNA is not eligible for patent protection. This decision overturned two earlier Federal Court decisions (Cancer Voices Australia v Myriad Genetics 2013 and D’Arcy v Myriad Genetics 2014) which had unanimously upheld the patent eligibility of isolated DNA, specifically the isolated BRCA DNA which was the subject of Myriad’s Australian patent number 686004.

This decision has reversed decades of accepted practice in Australia in relation to patent eligibility and although now arguably aligning Australian patent eligibility practice more closely with that of the US, nevertheless sets it at odds with most other jurisdictions, including all of Australia’s major trading partners.

Australian effects