Navigating natural product-related patents in Australia and beyond
Claire Gregg
A * and Michael J. Caine A
A Davies Collison Cave, Level 15, 1 Nicholson Street, Melbourne, Vic. 3000, Australia.
Australian Journal of Chemistry 76(8) 413-417 https://doi.org/10.1071/CH22254
Submitted: 30 November 2022 Accepted: 23 January 2023 Published: 2 May 2023
© 2023 The Author(s) (or their employer(s)). Published by CSIRO Publishing.
Abstract
The field of natural products chemistry is ripe with innovation that underpins a broad range of industries. Patents are critical to incentivising the investment needed to drive this innovation and there is surprisingly broad scope to protect natural product-related inventions using patents. However, the patent process can be difficult to navigate and recent developments in case law, particularly in the United States (USA), have introduced further complexities into the patent system that undermine innovation in the natural products space. While steps are being taken to address these issues, we outline the requirements for patent eligibility in Australia, the US and Europe, and discuss the different aspects of natural products chemistry that may be considered patentable, to assist readers in navigating the current complexities of seeking patent protection.
Keywords: innovation, intellectual property, natural products, patents.
References
[1] Association for Molecular Pathology v. Myriad Genetics, Inc. (2013) 569 U.S. 576.[2] D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334.
[3] Patent Eligibility Restoration Act of 2022. https://www.congress.gov/bill/117th-congress/senate-bill/4734/text
[4] Patents Act 1990 (Cth), s 18(1)(a).
[5] National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252.
[6] Statute of Monopolies, s 6.
[7] Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686.
[8] Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9.
[9] 35 USC. § 101. http://uscode.house.gov/view.xhtml?req=granuleid:USC-prelim-title35-section101&num=0&edition=prelim
[10] Mayo Collaborative Servs. v. Prometheus Labs. Inc. 132 S.Ct. 1289, 1294 [2012]; Alice Corp. v. CLS Bank Intl., 134 S.Ct. 2347, 2354 [2014].
[11] European Patent Convention, Rule 27(a).
[12] Australian Patent No. 3428093.
[13] Australian Patent No. 2012356229.
[14] German Patent No. 36433.
[15] Australian Patent No. 2020202064.
[16] Spicer Spicer Pty Ltd. v The Coca-Cola Company & PureCircle Sdn Bhd [2021] APO 31; Australian Patent No. 2018200689.
[17] See, e.g. United States Patent No. 5,955,422.
[18] Australian Patent No. 739954.
[19] See, e.g. European Patent Nos. 0702559 and 1846018, United States Patent Nos. 8420105, 9238061 and 9238061, among others.
[20] United States Patent No. 9567356.
[21] United States Patent No. 2442141.
[22] United States Patent No. 2686750.
