Reports of the Death of Gene Patents Are Greatly Exaggerated On June 13, 2013, the Supreme Court ruled

in the case of Association for Molecular Pathology et al. vs. Myriad Genetics, Inc. et al. (569 U.S. __ (2013)) that a naturally occurring DNA segment is a product of nature and not patent eligible subject matter merely because it has been isolated from a genome. The Court further found that cDNA is patent eligible because cDNA does not occur in nature. cDNA is a synthetic form of DNA, which omits certain nonfunctional portions of naturally occurring DNA. In writing the opinion in which all the justices joined (J. Scalia in part), Justice Thomas was careful to limit the scope of the holding. In particular, he cautioned that the opinion has no implications regarding the patent eligibility of inventive methods. For example, claims to methods of using isolated DNA to conduct genetic testing remain viable. Justice Thomas further cautioned that the Court did not consider the patentability of DNA in which the order of the nucleotides (the building blocks of DNA) is altered relative to the naturally occurring state. Despite the caveats of Justice Thomas, it is expected that those having an interest in invalidating patents will attempt to extend the ruling to encompass all products of nature that have been purified from their natural states without further modification or alteration.

Patent applicants would be well-advised to include within their applications claims that vary in scope and type so as to provide a fallback position in the event that the definition of patent eligible subject matter is further narrowed by the courts or Congress. If you have any questions or comments regarding this news brief, please contact the author, David Tener.

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