07 June 2015

Myriad Hearing Date Set, Commonwealth Opposes IPTA Intervention

High Court of Australia from lakeOral arguments in the High Court appeal by Yvonne D’Arcy in the Myriad Genetics BRCA gene patent case will be heard in Canberra on Tuesday, 16 June 2015.

In the latest development in the case, on 26 May 2015, the Solicitor General of the Commonwealth of Australia filed an application to intervene in the Myriad proceedings.  The Commonwealth intervention will be triggered in the event that the High Court grants the request by the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) (which I wrote about back in May) to intervene in the High Court proceedings as amicus curiae.

IPTA is seeking to raise a constitutional question, namely whether the concept of ‘invention’ within the Patents Act 1990 should be interpreted as extending to the full limit of the power granted to the Commonwealth to make laws ‘with respect to … patents of inventions’ under section 51(xviii) of the Commonwealth of Australia Constitution Act (the Constitution), in the absence of any express contrary intention.

As an Australian taxpayer, I find this development intensely irritating, and my annoyance is not directed at the Government, but at IPTA.  In effect, the Australian people are now footing the bill for Commonwealth intervention in High Court proceedings between two private parties as a direct result of IPTA’s decision to introduce a constitutional issue into the case.  With interpretation of the Constitution potentially at stake, the Government has not really had any choice in the matter.

The Commonwealth is opposing IPTA’s application to intervene.  However, in the event that the High Court grants the application, the Commonwealth will make submissions urging the Court to reject IPTA’s interpretation of the scope of the constitutional power to make laws with respect to patents.

The Issues in a Nutshell

As followers of the case will be aware, the High Court is being asked to review the decision of an enlarged panel of five judges of the Federal Court of Australia finding that isolated genetic material is eligible for patenting in Australia under the legal test of ‘manner of manufacture’.  This is essentially the same question that was addressed by the US Supreme Court in its 2013 judgment in Association for Molecular Pathology v Myriad Genetics, Inc. 569 U.S. ___

Whereas the top US court found isolated genes to be unpatentable, the six judges that have so far considered the question in the Australian litigation (i.e. the trial judge, plus five judges unanimously on appeal) have reached the opposite conclusion.

Significantly, the Solicitor General’s written submissions make it very clear that the Commonwealth is not expressing a view ‘on the ultimate question of whether isolated nucleic acid is patentable under the Patents Act.’  That is, the Government (unlike IPTA) has no interest in influencing the development of the law regarding patent-eligibility of isolated genetic material.  Its only goal is to urge the High Court not to mess with interpretation of the Constitution.

IPTA’s Argument

Put simply, IPTA contends that the constitutional power encompasses the grant of patents on isolated genetic materials, and that the Patents Act should be construed to ‘go to the limits’ of this power, except to the extent that the Parliament has seen fit to legislate for specific exclusions, such as the prohibition against patents on ‘human beings, and the biological processes for their generation’ set out in subsection 18(2).

I disagree.  In successive Australian Patents Acts, the Parliament has consistently seen fit to retain the venerable ‘manner of manufacture’ terminology, with the intention of allowing the courts to continue to develop the scope of patent-eligible subject matter in a flexible manner as technology advances, just as they have done since enactment of the UK Statute of Monopolies 1623

The Constitution grants legislative powers, while the extent to which those powers are exercised is reflected in specific Acts of Parliament.  Nobody is suggesting that the Commonwealth does not have the power to make laws ‘with respect to’ patents.  Nor is anybody disputing that the scope of such laws could extend to patents on isolated genetic material, should that be Parliament’s intent.  However, only IPTA is proposing a presumption that a law should encompass the full extent of the constitutional power in the absence of an express limitation.

The Commonwealth’s Position

It appears that the Government agrees with me.  In short, the Commonwealth opposes IPTA’s application to intervene but, in the event that the application is granted, the Commonwealth denies that the Patents Act should be construed so as to have the full reach of section 51(xviii) of the Constitution.

The Solicitor General’s written submissions describe IPTA’s proposition, that courts should presume Parliament intends to legislate to the limits of its constitutional power unless there is a clear indication to the contrary, as ‘a radical interpretive principle’ and an ‘inversion’ of the established approach to statutory interpretation.

The Commonwealth further points out that the Constitution is not like other legislation.  It is ‘a mechanism under which laws are to be made’.  It is notoriously, and deliberately, difficult to change, unlike legislation enacted to regulate day-to-day affairs, which can be amended or repealed by the Parliament.  As the submissions state:

Sometimes, Parliament will seek to regulate all matters falling within a particular head of power under s 51. More often, it will not. To suggest that federal legislation should, without more, be interpreted to "go to the limits" of constitutional power is to ignore the broad choices that the Constitution leaves the Parliament to govern as it sees fit within its field of constitutional competence.

Furthermore, the Commonwealth submits that acceptance of IPTA’s argument would effectively ‘constitutionalise’ all patent proceedings in which subject matter eligibility is raised as an issue.  Courts at all levels (and, perhaps, decision-makers at the Patent Office level as well) would need to consider the scope of the constitutional concept of ‘patents of inventions’ as part of determining the scope of ‘manner of manufacture’ in the Patents Act 1990.  That would, frankly, be an absurd outcome!

Conclusion – Our Taxes At ‘Work’

It is one thing if IPTA sees fit to spend its members’ money (if that is, indeed, what it has done) on seeking to intervene in significant patent matters.  As a non-member, that is no skin off my nose, though I would like to think that interested members would voice their opinions internally to the Institute, whatever those views may be.

However, by raising a constitutional issue, IPTA has dragged the Government into the proceedings, which has no interest in interfering with the High Court’s decision-making on the patent-eligibility of isolated genes.  The Australian taxpayer – i.e. me, and maybe you, too, depending upon where you live and work – is therefore now lumbered with the cost of defending long-established principles of constitutional interpretation.

Obviously, the actual cost of the Commonwealth’s intervention is but a tiny drop in the massive ocean of expenditure made by the Australian Government every year.  But that is not the point.  On an alternative view, it is more money than some individual taxpayers contribute in a year.  And it is money that should never have needed to be spent.

Image © Nicholas Brown (via Wikimedia Commons). Creative Commons Attribution 2.0 Generic licence.


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