Federal Circuit Reaffirms Patent Eligibility of Isolated Human Genes
By Jie Zhang – Edited by Jeffery Habenicht
Ass’n for Molecular Pathology v. USPTO, No. 2010-1406 (Fed. Cir. Aug. 16, 2012)
The Federal Circuit, on remand from the Supreme Court in light of the Court’s decision in Mayo Collaborative Servs. v. Prometheus Labs., affirmed in part and reversed in part a decision by the Southern District of New York, which had held that isolated breast cancer genes and a screening method based on such genes were non-patentable.
The Federal Circuit affirmed the district court’s ruling that it had jurisdiction to hear the declaratory judgment case, finding that at least one plaintiff had standing to challenge Myriad’s patents. On the merits, the Federal Circuit reversed the district court and reiterated its prior holding that isolated genes were patent eligible because they were compositions of matter sufficiently different from the naturally occurring genes. The court also found that the method to screen therapeutics based on the growth rate of cells containing mutated genes was patentable as it included transformative steps and was more than a restatement of the law of nature. However, the court affirmed the district court’s holding that the method to compare gene sequences was non-patentable because it involved only abstract mental steps.
JOLT Digest previously covered both this case and Prometheus. Reuters provides an overview of the case and reports on reactions of the scientific community and the biotech industry. Patently-O criticizes the court’s analysis for ignoring the impact of Prometheus and predicts an en banc rehearing or a grant of certiorari by the Supreme Court. (more…)