D’Arcy v. Myriad Genetics: A Demand for the “Made” or “Non-Information” and Clear Subject Matter?

Abstract

In October 2015, the High Court of Australia (HCA) handed down D’Arcy v. Myriad Genetics and overturned the Full Court of the Federal Court of Australia by holding that key product claims from Myriad Genetics’ BRCA1 gene patent did not constitute manners of manufacture. Two years earlier, the Supreme Court of the United States (SCOTUS) had similarly ruled against certain product claims from Myriad Genetics’ BRCA1 and BRCA2 patents, finding that simply isolated genetic sequences are not patentable subject matter. From their results, one could easily make the mistake of seeing the two decisions as being identical and placing Australia and the US at odds with Europe. However, as this article highlights, Australian law is conceptually different from US law and, strictly speaking, the HCA did not rule that isolated genetic sequences can never constitute patentable subject matter. However, at the end of the day, it is arguable that the laws are very similar in effect. This article examines the HCA decision and compares and contrasts it to that of SCOTUS.