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« News from Abroad: High Court Rules Myriad's BRCA Genes Not Patentable Subject Matter in Australia | Main | USPTO Patent Quality Chat Webinar Series »

October 08, 2015


A "surprising outcome" it was not. For more than 20 years I have been warning patent bureaucrats, the patent profession and the biotechnology industry that this day would come. It came a little earlier in the United States. The decision is, in my opinion, consistent with basic patent law principles. It is not a surprising outcome. What is surprising is how many patent attorneys and patent lawyers refused to understand and apply those basic principles. It is telling that it was only because of the goodwill of the ACLU in the United States and Mrs D'Arcy in Australia that the erroneous path taken by the patent profession has been finally stopped. Although, I expect there will be a word-smithing attempt in drafting claims to overcome the decision.

You do realize, Mr. Palombi, that the US and Australia are in the minority in these decisions, correct? Fortunately, the days of gene patenting are over regardless of these decisions, insofar as human gene patents and applications were all filed between 1998-2000 and no patent can extend longer than 20 years from the filing date. So by al means feel free to revel in a decision 30 years too late to make any difference.

Unfortunately other commitments have prevented me from giving detailed consideration to this decision. However, my first impression is that the core of the decision is similar to that in the US and is based on the limited disclosure in the patents and the underlying disclosure being information rather than tangible molecules. As in Myriad (US) the danger is a failure to brief the decision adequately and consequent interpretation beyond wwhat the underlying fact pattern will support.

You'll have to find something new to do now, Luigi.

The end of Australian enlightenment.... Sad.

Of more interest will be if the Australians follow the USA and step off the deep end, finding that nothing is patent eligible because it's obvious (as opposed to nothing being patentable because it's obvious).

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