27 July 2014

Is Australian Court Looking to Uncle Sam on Patent-Eligibility?

Uncle SamThe question of what kinds of things should be eligible for patent protection is one that has been running in parallel in Australia and the US in recent years. 

Methods of medical treatment came under scrutiny of the US Supreme Court in Mayo Collaborative Services v Prometheus Laboratories, Inc and the Australian High Court in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (see High Court Rules Methods of Medical Treatment Patent-Eligible). 

The Supreme Court considered gene patents in Association for Molecular Pathology v. Myriad Genetics, Inc, while a corresponding Australian patent came before the Australian Federal Court in Cancer Voices Australia v Myriad Genetics Inc (see Australian Federal Court Declares Isolated Human Genes Patentable). 

And the recent Supreme Court decision on computer-implemented business processes, in Alice Corporation Pty Ltd v CLS Bank International addresses similar issues to those tackled by the Australian Federal Court in Research Affiliates, LLC v Commissioner of Patents (see Research Affiliates Loses Appeal Against Business Method Rejection).

The Australian Myriad and Research Affiliates cases are currently both on appeal to full benches of the Federal Court.  The Myriad appeal was heard on 8 August 2013, less than two months after the US Supreme Court handed down its corresponding decision.  The Research Affiliates case was heard on 18 November 2013, and in the intervening period the Supreme Court has managed to hear and decide the Alice case.  We continue to await decisions from the Australian court in both the Myriad and the Research Affiliates cases.

While the delays in deciding these cases are not inconsiderable, they do not appear to be particularly unusual by current standards of the Full Court – another recently-decided patents appeal, Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73, was heard on 26-27 August 2013, with judgment handed down on 19 May 2014.

Other Causes of Delay?

In both the Myriad and the Research Affiliates appeals, however, there seem to be additional factors delaying judgment.  Just in this past week, the Research Affiliates court issued orders for the parties to be ‘given leave to file and serve further written submissions of no more than 2 pages in length to address the relevance of Alice Corp Pty Ltd v CLS Bank International, 134 S Ct 2347 (2014) to the proceeding by 4:30 pm on 4 August 2014.’

It is interesting, but unsurprising, that the Australian court is looking to the recent US Supreme Court decision in AliceAs I noted recently, the Federal Court has previously referred to the similar policy considerations behind the US patent-eligibility statute (i.e. 35 USC §101) and Australia’s ‘manner of manufacture’ test as a justification for treating US decisions as relevant.  However, that was before the Bilski and Alice judgments moved the US law away from the ‘useful, concrete and tangible result’ and ‘machine or transformation’ tests that had been applied by the US Court of Appeals for the Federal Circuit.

The most recent US Supreme Court rulings establish a ‘framework’ according to which a claim is first assessed to see whether it is directed generally to a patent-ineligible law of nature, natural phenomenon or abstract idea and, if so, then the claim is evaluated to see whether it contains something more, that is sufficient to bring it within the bounds of a patent-eligible application of the excluded subject matter.  As I have also noted previously, this approach is at odds with that set down by the Australian High Court in National Research Development Corporation v Commissioner of Patents [1959] HCA 67(‘NRDC’), which requires an assessment of whether a claim, as a whole, provides an ‘artificial state of affairs’ and would not seem to authorise breaking down the claim into ‘eligible’ and ‘ineligible’ contributions.

What’s Happening with Myriad?

In the Myriad case, the court records show that the parties filed additional written submissions on 31 January 2014 and 3 February 2014 respectively.  There were no orders issued by the court in the Myriad case, so the subject matter of the filings in January/February is not clear.  However, it is probable that the court received submissions in relation to the possible impact of the High Court’s December judgment in the Apotex case.

Conclusion – Much Ado About Nothing Much?

Possibly we should not read too much into the Federal Court’s receiving further submissions after the hearings in the Myriad and Research Affiliates cases.  With Apotex now being the most recent High Court authority on patent-eligibility in the biological sciences, it is only natural that the Federal Court will feel obliged to refer to this decision.  In the case of Research Affiliates, there were substantive submissions made at the hearing on the relevance of US law, and a new Supreme Court ruling on the subject might well bear on those submissions.

So the court in each case is almost certain to make reference to the Apotex and Alice decisions respectively, and it would plainly be unreasonable for it to do so without giving the parties an opportunity to make submissions.  Ultimately, however, the Federal Court remains bound by NRDC, the continuing authority of which was reconfirmed by the High Court in Apotex.

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