Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65

FEDERAL COURT OF AUSTRALIA

Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65 Citation: Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65

Parties: CANCER VOICES AUSTRALIA and YVONNE D'ARCY v MYRIAD GENETICS INC and GENETIC TECHNOLOGIES LIMITED (ABN 17 009 212 328)

File number: NSD 643 of 2010

Judge: NICHOLAS J

Date of judgment: 15 February 2013

Corrigendum: 25 February 2013

Catchwords: PATENTS – Patent including claims for isolated DNA and RNA (nucleic acid) – whether claims to composition comprising naturally occurring DNA and RNA that has been isolated are for a manner of manufacture for purposes of s 18(1)(a) of Patents Act 1990 (Cth) – where isolated DNA and RNA has been extracted from cells removed from human body and purged of other biological material with which it is associated in the cell – whether isolation of naturally occurring DNA and RNA results in an artificial state of affairs with a discernible effect – whether claims to isolated DNA and RNA are to a "mere discovery" and therefore not patentable – whether claims to isolated DNA and RNA are to a "product of nature" and therefore not patentable – whether order revoking challenged claims should be made Held: each of challenged claims is to a manner of manufacture – requirements of s 18(1)(a) of Patents Act 1990 (Cth) satisfied – where non-compliance with requirements of s 18(1)(a) sole ground relied upon in support of application for orders revoking challenged claims – application dismissed with costs.

Legislation: Patents Act 1990 (Cth) s 18 Statute of Monopolies s 6 Patents Act 1949 (UK) Patents Bill 1990 (Cth) Patent Amendment (Human Genes and Biological Materials) Bill 2010 (Cth) Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)