Following the 7 October 2015 decision of the High Court of Australia [i] that claims to isolated DNA sequences are not patent eligible, IP Australia have released a Consultation Document on their proposed response to the High Court decision.

The Consultation Document can be found here. The deadline for making a submission to the proposed practices is 30 October 2015.

In what may be seen as a positive outcome, IP Australia has taken a narrow view of the High Court’s decision. Their proposed practice is based on the High Court’s reasoning that the invention in nucleotide sequences relates to the information encoded in the sequences, rather than the chemical structure of the sequences themselves.

In light of the High Court’s decision IP Australia will not accept claims for the following subject matter on the basis that it is not eligible for patent protection:

  • Naturally occurring (human) nucleic acid sequences encoding polypeptides or functional fragments thereof - either isolated or synthesised
  • Naturally occurring (non-human) nucleic acid sequences encoding polypeptides or functional fragments thereof - either isolated or synthesised
  • cDNA[ii]
  • Naturally occurring human and non-human coding RNA - either isolated or synthesised

Examination of applications that contain claims to patent ineligible subject matter described above has been suspended until IP Australia has finalised its practice.

It is not yet certain what will happen to applications that have been accepted or granted with claims that are now considered patent ineligible. Baldwins will be closely monitoring this situation and will provide regular updates.