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News from Abroad: Australian Senate to Release Gene Patenting Findings Next Week

    By Damian Slizys —

Australian Senate Following the discussion in Patent Docs of the Australian Senate's gene patent inquiry last December (see "Gene Patenting: Australian Potpourri"), we now expect the findings of the Senate enquiry to be set down on 17 June 2010, following two extensions of time.  The inquiry was allegedly initiated, in part, because of the attempts to enforce the Myriad Genetics patents in Australia which relate to the use of BRCA1/BRCA2 genes in breast cancer screening and as isolated products per se.  In light of the recent decision in Association for Molecular Pathology v. U.S. Patent and Trademark Office (09cv4515, U.S. District Court for the District of New York), the report will be of major interest.  This is particularly the case as many of the proposals put forward to the Senate committee will increase the burden on patentees significantly and/or exclude more than naturally-occurring genes from patentability.  For instance, one proposal requires that a patentee must publicly disclose sufficient information to enable the replication of the invention to the same standard as its closest commercial competitor before the payment of each renewal fee.  We will provide a report on the enquiry's finding once it has been handed down.

In addition, on 8 June 2010, plaintiff law firm Maurice Blackburn, initiated proceedings in the Australian Federal Court directed to invalidating the Myriad Genetics patents in Australia.  Although we have yet to review the pleadings, public statements by Maurice Blackburn indicate that the main legal argument against the patents was one of discovery over invention, but there were also big ethical and philosophical questions about whether the body could be privatised.  ''It's a healthcare rights issue and an issue of freedom of research into the fundamental building blocks of our being,'' the lawyers stated.  The progress of this case will clearly be of marked interest, particularly as the legal arguments proposed do not sit easily within the established grounds of invalidity under Australian law.

Dr. Slizys is a Partner at FB Rice & Co in Melbourne, Australia.

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9 responses to “News from Abroad: Australian Senate to Release Gene Patenting Findings Next Week”

  1. Paul Kilborn Avatar
    Paul Kilborn

    One submission to the Senate Committee reveals the real culprits behind the subversion of the patent system into allowing the patenting of genes – the Dark side of the Force sullying the purity of the Statute of Monopolies- those wily Darth Vaders who use words as light sabres to ensure that Evil prevails. You guessed it, WICKED PATENT ATTORNEYS:
    ‘The propensity for those that benefit the most from patent monopolies to employ patent attorneys to draft patent applications that inevitably (no matter what legislative mechanisms are put in place to stop this behaviour) extend to things that are not “manners of new manufacture”, demonstrates the futility of persevering any system of patent monopolies. Indeed, the playing of the patent system is so entrenched in the psyche of patent attorneys that this profession, which is skilled at word play, will
    exploit whatever loophole is inadvertently created in statutory
    language to obtain a patent monopoly for their clients, regardless of the spirit and intent of that legislation.’
    The terms of reference of the Senate Committee and submissions to that Senate Committee can be found at http://www.aph.gov.au/senate/committee/clac_ctte/gene_patents/index.htm
    May the Force be with you. Now back to the Death Star.

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  2. Paul Kilborn Avatar
    Paul Kilborn

    PS. Only patent attorneys can describe their vanquished foe as “mortally worded”!

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  3. Chris H Avatar
    Chris H

    Is the complaint for the suit in Australia available online? Is there a formal citation available yet for the case?

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  4. Paul Kilborn Avatar
    Paul Kilborn

    An audio report on the legal action can be found on the Australian Broadcasting Commission’s ABC Science site at http://www.abc.net.au/science/articles/2010/06/08/2921468.htm

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  5. Paul Kilborn Avatar
    Paul Kilborn

    The Federal Court listing for the case can be found at https://www.comcourts.gov.au/file/Federal/P/NSD643/2010/actions

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  6. Paul Kilborn Avatar
    Paul Kilborn

    The issue of whether genes are patentable is one of the issues considered in the report of the Australian Law Reform Commission titled Genes and Ingenuity: Gene Patenting and Human Health (2004)
    http://www.austlii.edu.au/au/other/alrc/publications/reports/99/
    The patentability of genes, including the issue of whether an isolated gene is a mere discovery and therefore not patentable is specifically discussed at
    http://www.austlii.edu.au/au/other/alrc/publications/reports/99/06.html#Heading71

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  7. Chris H Avatar
    Chris H

    Thanks Paul.

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  8. Paul Kilborn Avatar
    Paul Kilborn

    The following appears on the Senate website (http://www.aph.gov.au/senate/committee/clac_ctte/gene_patents/index.html )
    “The Senate has extended the reporting time for the Gene Patents Inquiry until 2 September 2010. The Committee sought this extension due to the extensive evidence received and the complex nature of many issues associated with this inquiry.
    While the Committee has had some discussion over the conclusions and recommendations that it may reach in its report to the Senate, it requires further time to give more detailed consideration to the complex issues involved and to assess the range of opinions that were expressed in evidence during the inquiry.”

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  9. Paul Kilborn Avatar
    Paul Kilborn

    The Senate website address should read: http://www.aph.gov.au/senate/committee/clac_ctte/gene_patents/index.htm

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