High Court to be asked to consider patentability of BRCA genes

Lawyers acting for the Appellant in the BRCA gene case have announced that  they will seek special leave to appeal the decision to the High Court of Australia. Earlier this month, the full bench of the Federal Court of Australia decided unanimously  in favour of Myriad Genetics Inc.

Media reports suggest that the Appellant will continue to argue that the Full Federal Court has incorrectly characterised the subject matter of the BRCA gene patents as an ‘artificial state of affairs’ leading to an economically useful result – the wording of the 1956 Australian High Court leading decision on patent eligibility: NRDC v Commissioner.

When the Full Federal Court decision came down several weeks back, an academic widely thought to be actively linked to the fight over the patents inferred that the decision in NRDC was an inappropriate precedent in this case because it was decided in a time in which ‘biotech’ products of the type now claimed were not even contemplated. NRDC has been logically applied by Australian Courts for over 50 years in cases pertaining to new technologies. The tests developed in the seminal decision by the most superior Australian court are neither technology specific nor characterisable as frozen in time. The very carefully worded judgement of the Full Federal Court may be difficult to overturn. As hard as the Appellant may try to bring the outcomes of the US Supreme Court decision in a very similar case to bear in Australia, the fact remains that US law and Australian law concerning patent eligible subject matter are very different.

The timing of the special leave application is still unclear.