Gene Probes as Unpatentable Printed Matter

20 Fed. Cir. B.J. 528 (2011)

UNC Legal Studies Research Paper No. 1753853

20 Pages Posted: 2 Feb 2011 Last revised: 3 Jan 2015

Andrew Chin

University of North Carolina (UNC) at Chapel Hill - School of Law

Date Written: February 2, 2011

Abstract

In this Article, I argue that the most problematic kind of gene patents - those claiming short DNA molecules used to probe for longer gene sequences - should be held invalid as directed to unpatentable printed matter. This argument, which emerges from recent developments in biotechnology and information technology, is grounded in the printed matter doctrine’s structural role of obviating patentability inquiries directed to inapposite information-management considerations. Where the inventive contribution in a claimed gene probe subsists solely in stored sequence information, these inapposite considerations lead the novelty and nonobviousness analyses to anomalous results that the printed matter doctrine was designed to avoid. I conclude that the doctrine should apply to all gene probes capable of being synthesized by known general methods.

Keywords: Biotechnology, Gene Patents, DNA, Printed Matter Doctrine, Patentable Subject Matter, Myriad Genetics

Suggested Citation

Chin, Andrew, Gene Probes as Unpatentable Printed Matter (February 2, 2011). 20 Fed. Cir. B.J. 528 (2011); UNC Legal Studies Research Paper No. 1753853. Available at SSRN: https://ssrn.com/abstract=1753853 or http://dx.doi.org/10.2139/ssrn.1753853

Andrew Chin (Contact Author)

University of North Carolina (UNC) at Chapel Hill - School of Law ( email )

Van Hecke-Wettach Hall
100 Ridge Road
Chapel Hill, NC 27599-3380
United States
919-962-4116 (Phone)

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