High Court considers crucial patent case

Lawyer predicts the High Court will rule against genetic patenting in the D’Arcy v Myriad case.

The High Court has heard the case for genetic patenting in the D'Arcy v Myriad Genetics appeal and based on proceedings, looks set to rule against genetic patenting according to breast cancer scientist and Shelston IP partner, Grant Shoebridge.

Myriad Genetics is attempting to patent an isolated gene for testing susceptibility to breast cancer – an important step in attracting investment for commercialisation of innovative medical science. 

“The importance of patenting isolated materials is that it provides confidence to investors that fund the commercialisation of innovation,” said Shoebridge.  “If patents are not available to protect that innovation, then it’s more than likely that the innovation will not be not be made available to the general public in the form of new diagnostics and methods of treatment.”

While the outcome is difficult to predict, not allowing the patenting of such material may end up proving detrimental to the development of medical science, Shoebridge said.

“What I fear is that if the decision goes agaisnt Myriad, researchers will develop diagnostic tests and keep them as trade secrets,” said Shoebridge.  “What you have there is a perpetual monopoly.”

Shoebridge, who attended the High Court hearing, predicted the judges’ sympathy leant more towards D’Arcy’s case.

“It seemed that the judges were more accepting of D’Arcy’s narrow position, that specific isolated genes claimed should not be patentable.  Just based on that, it seems that the High Court is considering this case very narrowly in terms of how these genes are being claimed,” he said.

The idea that Myriad Genetics is patenting the rights to personal genetic material is a false one, according to Shoebridge.  “They really were a pioneering company that invested a great deal of money that eventually was successful in producing a test that will save women’s lives,” he said.

“I think it would be unrealistic of people to have an expectation that Myriad Genetics spends an enormous amount of money… on developing and commercialising this test and not make a financial return on it,” he said.

“The commercial reality is that they’re a business and that they need to fund further research and development.  The cost of healthcare is a complex issue that will not be solved by prohibiting the patenting of isolated biological material,” he said.

“The fact is, no one’s genes are being patented,” he said.  “The claimed compounds are directed to isolated DNA and once you have isolated DNA or a gene, what you have is technology that is useful in either a diagnostic test or method of treatment.”

At this stage its difficult to predict the outcome of the High Court decision, however, Myriad’s American patent was found invalid by the US Supreme Court.

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