As a follow up to the Supreme Court’s March 20, landmark unanimous 9-0 decision in Mayo v. Prometheus, on Monday, March 26, the Supreme Court unsurprisingly vacated the Federal Circuit Court’s decision to allow a biotech company to patent human DNA in the case AMP v. Myriad Genetics. The case has been remanded back to the federal circuit and is to be decided in accordance with the “a newly discovered law of nature is itself unpatentable and the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art,” standard that was set out in Mayo v. Prometheus.
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Commentary from Professor Dennis Crouch:
The Supreme Court today [March 26] vacated the Federal Circuit's decision in AMP v. Myriad Genetics and has ordered the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus. To be clear, the Supreme Court's move here is not a ruling on the merits but rather merely a recognition that the validity of Myriad's human gene patents may be impacted by the Mayo decision. I previously wrote that one reasoned result of the Mayo decision is that Myriad's claims directed toward isolated human DNA are now invalid.
Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon. One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter. As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.
Continued at:
http://www.patentlyo.com/patent/2012/03/gene-patents-amp-v-myriad-genetics. html?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+PatentlyO+%28Dennis+Crouch%27s+Patently-O%29
(Use Tiny URL to get to above link http://tinyurl.com/823b4dy)
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For more on the Court's ruling in Mayo v. Prometheus see the post:
http://current.com/technology/93717572_supreme-court-biotech-industry-cant-paten...
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