D'Arcy v Myriad Genetics Inc [2015] HCA 35

HIGH COURT OF AUSTRALIA

FRENCH CJ, KIEFEL, BELL, GAGELER, KEANE, NETTLE AND GORDON JJ

YVONNE D'ARCY APPELLANT

AND

MYRIAD GENETICS INC & ANOR RESPONDENTS

D'Arcy v Myriad Genetics Inc [2015] HCA 35 7 October 2015 S28/2015

ORDER

1. Appeal allowed.

2. Set aside paragraph 1 of the order of the Full Court of the Federal Court of Australia made on 5 September 2014 and, in its place, order that:

(a) the appeal be allowed; and

(b) paragraph 1 of the order of Nicholas J made on 15 February 2013 be set aside and, in its place, order that claims 1, 2 and 3 of Australian Patent No 686004 be revoked.

On appeal from the Federal Court of Australia

Representation

D K Catterns QC with P K Cashman for the appellant (instructed by Maurice Blackburn Lawyers)

D Shavin QC with C Dimitriadis SC for the first respondent (instructed by Jones Day)

Submitting appearance for the second respondent

Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS

D'Arcy v Myriad Genetics Inc

Intellectual property – Patents – Patents Act 1990 (Cth) – Patentable subject matter – Patent claimed isolated nucleic acid coding for BRCA1 protein with specified mutations or polymorphisms indicative of susceptibility to cancer – Whether invention claimed is a patentable invention under s 18(1)(a) of Patents Act 1990 (Cth) – Whether invention claimed is a "manner of manufacture" within meaning of s 6 of Statute of Monopolies – Whether sufficient that invention claimed is artificially created state of affairs of economic significance – Utility of "artificially created state of affairs" criterion – Factors relevant to whether new class of claim falls within concept of manner of manufacture.

Words and phrases – "artificially created state of affairs", "isolated nucleic acid", "manner of manufacture", "naturally occurring", "patentable invention", "product of nature".