McDonnell Boehnen Hulbert & Berghoff LLP (JD Supra Australia)

In July 1969, as a young boy, I watched in awe, along with the rest of world, as the United States of America put two men on the moon.  Years later in 2011, the then Prime Minister of Australia, Julia Gillard, stood before U.S. Congress and recalled the same moon-landing memory and with acquiescence wept that "Americans could do anything!"  Today, the U.S. seems to have entered, what was once...

'Swiss format' or 'Swiss-type' patent claims have a general structure similar to the following: Use of compound X in the manufacture of a formulation for the treatment of medical condition Y.

When the Australian High Court ruled against the patentability of isolated naturally occurring genes in the Myriad decision, a number of commentators believed that the decision would ultimately invalidate claims directed to methods involving the practical application of genes. A recent Federal Court decision, however, has confirmed that claims directed to methods involving the correlation of...

The Australian Full Federal Court's recent decision in Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129 confirms that an extension of patent term for pharmaceutical substances does not extend to Swiss type claims.

The scope for enforcement of Swiss-style claims may be broader in Australia than for method of medical treatment claims. Second medical use inventions can be claimed in an ever increasing number of claim formats depending on the jurisdiction. While such inventions in Europe are now claimed in purpose-limited-product format, or so called 'EPC2000' format, and in the U.S. are pursued in method of

Two recent Australian Patent Office decisions have provided clarity as to the patentability of isolated nucleic acid sequences following the High Court's decision in D'Arcy v Myriad Genetics ('Myriad'). The first decision is perhaps not such a surprise, however the second decision represents a clear contradiction in Patent Office practice following Myriad until now. The outcome of both...

Following the recent public consultation in view of the Australian High Court's decision in D'Arcy v Myriad Genetics ("Myriad"), IP Australia has released new Examination Guidelines for applications which may be affected by the decision. Originally published in Spruson & Ferguson - January 1, 2016.

The Australian High Court yesterday unanimously overturned six lower court judges and dismissed some very careful reasoning to not only follow the U.S. Supreme Court in invalidating claims to the BRCA1 and 2 gene sequences, but also to go further to rule out the patent-eligibility of cDNA. The Court bought the same 'substance over form' argument that was successful at the U.S. Supreme Court, but

Just over one year after the Full Federal Court of Australia unanimously upheld an earlier Federal Court decision that naturally occurring nucleic acid molecules are patentable in Australia, the High Court of Australia has today handed down a unanimous judgement overturning this decision. This highly anticipated decision reverses decades of accepted practice in relation to the patentability of...

D'Arcy v. Myriad Genetics Inc & Anor [2015] HCA 35 - The High Court of Australia today handed down its decision in D'Arcy v Myriad, deciding once and for all that isolated nucleic acids do not define patent-eligible subject matter in Australia. Originally published in Spruson & Ferguson on October 1, 2015.

D'Arcy v Myriad Genetics Inc [2015] HCA 35 - The High Court of Australia has today handed down its decision in D'Arcy v Myriad Genetics Inc [2015] HCA 35, unanimously striking down the validity of the first three claims of Myriad Genetics Inc's (Myriad) patent. Those claims related to isolated nucleic acid sequences of the BRAC1 gene, mutations of which have been implicated as a risk factor

The High Court of Australia today heard the long anticipated appeal from the unanimous decision of a 5-judge bench of the Full Federal Court to allow Myriad's claims to isolated nucleic acids. The question before the High Court is whether the invention claimed in claims 1-3 of Australian Patent No. 686004, owned by Myriad Genetics, is a manner of manufacture within the meaning of s 6 of the...

The Full Federal Court of Australia has handed down its long awaited decision in D'Arcy v Myriad Genetics Inc today, affirming that isolated DNA and RNA are patentable subject matter under Australian law.

Due to the complexity of Australian patent litigation, it can take more than 18 months for a patent dispute to be finally determined by a judge. This is more than enough time for an infringing competitor to irreversibly damage the patentee and its exclusive market. Interlocutory injunctions (also known as preliminary injunctions) are designed to prevent competitors from marketing their products

Part I of this article addressed basic concepts of data privacy as set out in the policies of numerous regional and multilateral organizations, including the Organisation for Economic Co-operation and Development (“OECD”), Asia-Pacific Economic Cooperation (“APEC”), and the Association of Southeast Asian Nations (“ASEAN”). In Part II, we discuss the specific policies of several Asia-Pacific...

In the decision of Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (order), the High Court of Australia, Australia's supreme court, confirmed that methods of medical treatment are a "manner of manufacture" and therefore represent a patentable invention in Australia. Although Australia's Patent Office (IP Australia) and the Australian Federal Courts have previously determined and...

Originally published in Wrays on March 27, 2013. On 15 March 2013, the Australian Federal Court upheld Eli Lilly's patent for the active compound in their highly successful product ZYPREXA®. Lilly successfully defended the validity of the patent against a wide-ranging attack by the well-known generic pharmaceutical manufacturer Apotex. Wrays is pleased to have been able to work together...

In a significant win for Myriad, and their licensee Genetic Technologies Ltd, the Australian Federal Court on Friday upheld Myriad's method patents used in cancer screening for mutations in the BRCA1 gene. This decision will provide much-needed certainty to gene patent holders in Australia.

On Friday, the Federal Court of Australia handed down its decision in the case of Cancer Voices Australia & Anor v Myriad Genetics Inc & Ors. The presiding judge, Justice Nicholas, identified the issue in the case as one "of considerable importance," framing the question to be decided as whether a "valid patent may be granted for a claim that covers naturally occurring nucleic acid that has been

Australia is attempting to raise its patentability threshold and specification requirements. Significant amendments have been made to Australia's patent laws through enactment of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Most provisions will take effect from 15 April 2013.

Last year, the Australian Senate rejected a call for banning patents on human genes in Australia. This result came after almost a decade of debate, resulting in several Reports (including the 2011 ACIP Report on Patentable Subject Matter, the Senate Gene Patents Report, issued November 24, 2010, and the 2004 Australian Law Reform Commission's Report on Genes and Ingenuity: Gene Patenting and...