Following the High Court of Australia's decision in the Myriad case on 7 October, IP Australia has advised that in light of the decision, they will be issuing a public consultation document outlining proposed changes for examining patent applications containing claims to nucleic acid sequences.
IP Australia expects to publish the consultation document on their website next week. Stakeholders and the public will have two weeks to respond. IP Australia will then review (and possibly amend) their proposed changes depending on the impact these changes may have on responders.
In the meantime, IP Australia have advised that granted patents containing nucleic acid sequence claims will not be re-examined unless requested by a third party. Accepted applications containing nucleic acid sequence claims will be placed in abeyance until completion of the public consultation process. Depending on the outcome of the process, these accepted applications could be reexamined.
Unexamined patent applications with nucleic acid sequence claims and will sit in abeyance, as will examined applications on which responses have been filed (unless the deadline is within a month). Applicants facing imminent deadlines for applications containing nucleic acid sequence claims will be required to remove those claims to a divisional application before the deadline. If they do not, the application will lapse.
The response to the public consultation document may strongly influence IP Australia's examination of nucleic acid sequence patent applications, and possibly applications claiming natural products in general. Therefore, stakeholders wishing to limit the impact of Myriad should respond with legal and other arguments for why this decision should be restricted to only the subject matter considered.
We will report on the public consultation document when it is published. In the meantime, please contact us if you have any questions about this issue.