Nucleic Acids Remain Patentable in Australia
A recent Patent Office decision in Arrowhead Research Corporation [2016] APO 701 (“Arrowhead”) has confirmed that nucleic acids can still be patented in Australia.
Following the High Court of Australia’s ruling in D’Arcy v Myriad Genetics Inc [2015] HCA 352 (“Myriad”), the Australian Patent Office has been broadly objecting to claims that encompass isolated nucleic acids. This practice has frustrated applicants and their attorneys who consider many of the objections to be reactionary, and not consistent with the facts and principles set out in Myriad. In a very recent decision, the Patent Office has confirmed that nucleic acids remain patentable subject matter in Australia by allowing claims directed to interfering RNA compositions.
In Myriad, the High Court clearly stated that it would not be concerning itself with “gene patents” generally, but with the disputed claims specifically (at [37]). Those claims defined isolated nucleic acids per se that were useful in the detection of breast cancer. While acknowledging that the claims defined a product created by human action, the High Court considered that the “substance” of the claims was information, which could not be the subject of a valid claim.