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Court may uphold gene patent ruling

Federal Circuit revisited earlier decision allowing isolated human genes to be patented

The Federal Circuit has suggested it may hold firm in its earlier decision to allow isolated human genes to be patented.

In Prometheus v. Myriad, the Federal Circuit largely upheld Myriad Genetics Inc.’s patents on two genes that can identify a woman’s risk for breast and ovarian cancer. This earlier ruling gives Myriad exclusive rights to perform the genetic tests on women.

But in light of the Supreme Court’s recent decision surrounding the patentability of medical testing, the high court ordered the Federal Circuit to revisit its decision in Myriad. During oral arguments last week, a three-judge panel reiterated many of the views that led to the decision in Prometheus v. Myriad a year ago.

According to The Wall Street Journal Law Blog, Judge Alan Lourie said during that panel discussion that he still agrees with Myriad’s stance that it wasn’t patenting a “product of nature,” which many patient and medical groups have claimed the company is trying to do. Lourie also suggested that the Supreme Court’s ruling on medical testing raised different legal issues than that of Myriad and therefore wouldn’t apply to this case.

Judge Kimberly Moore, who also ruled in favor of Myriad in the earlier decision, said the U.S. Patent and Trademark Office has allowed DNA gene sequence patents for years, and that disrupting this long-held standard could be detrimental to various financial investments.

Judge William Bryson reiterated his dissenting opinion that while Myriad’s discovery of the two genes entailed difficult work, they were still unpatentable scientific facts.

The judges are expected to decide the case again in the next few months, and it is likely the loser will appeal to the Supreme Court.

Read more InsideCounsel stories about the ambiguity of patentability:

IP: The tug of war over abstract patents

Federal Circuit says Alice Corp.’s business methods are patentable

Mayo v. Prometheus cuts back on patentable inventions

Human Genes may not be patented



Cathleen Flahardy

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