Standing on Shaky Ground- US Patent-Eligibility of Isolated DNA and Genetic Diagnostics after Amp v. Uspto – Part II (Practical Implications & Chances for Supreme Court Review)

Abstract

This is the second part of a four-partite article discussing the US Federal Circuit decision in AMP v. USPTO, also known as the ACLU /Myriad "gene patenting" case ("Myriad"). Part I commenced with a description of the legal framework and an explanation of how the decision relates to the recently invigorated U.S. debate on patent eligibility, referring inter alia to the 2010 U.S. Supreme Court decision in Bilski v. Kappos and the pending certiorari in Prometheus v. Mayo. Before this background, Part I recited the complex procedural history of AMP v. USPTO and summarized the underpinnings of the outcome, i.e. the three different opinions of the Federal Circuit judges Lourie, Moore & Bryson who comprised the panel. Part II will now continue the tale with a detailed analysis of the decision's practical implications, which is followed by a closer look on the chances for an ultimate Supreme Court review. Why a potential Supreme Court review of AMP v. USPTO would indeed be a much welcomed and necessary development will be analyzed in Part III, which will be published in the next issue. This part will elaborate on the myriad of unsolved questions raised by both AMP v. USPTO and a bulk of subsequent case law addressing the patent-eligibility of biological correlations and software-related "inventions". These subsequent decisions indicate a serious split at the Federal Circuit with potentially broad implications not only for the patent eligibility of software-related patent applications and so-called "Beauregard"- claims, but also for biotech-claims directed to personalized medicine, biological correlations and compounds containing biological information. As far as possible, this part will also incorporate new developments that can be expected in the coming months, such as the pending certiorari decision in AMP v. USPTO and the pending Supreme Court decision in Prometheus v. Mayo. Part IV, which is to be published in issue 4, will finally offer a broader discussion of the recent US patent-eligibility developments from an innovation policy perspective including brief references to recent European developments. This will provide the basis for summarizing conclusions.