70 Pages Posted: 21 Dec 2012 Last revised: 10 Mar 2016
Date Written: December 19, 2012
On November 30, 2012, the U.S. Supreme Court granted certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc. on the question, “Are human genes patentable?” For over 150 years Supreme Court decisions have excluded from the federal patent power laws of nature and physical phenomena. The words "invention," "new" and "useful" in §101 are consistent with these exclusions from the federal patent power, so they are not the result of a judicially active court limiting the will of Congress.
The conclusions of Judges Lourie and Moore in Myriad Genetics that the isolated DNA segments of claim 1 constitute patentable subject matter disregard the Supreme Court's decisions in Chakrabarty and Funk Brothers on products derived from nature. “Isolation” is not an inventive step to change an unpatentable physical phenomenon into patentable subject matter. Turning to claim 2, even if the isolated cDNA segments do not under Chakrabarty and Funk Brother constitute a patentable product, under Prometheus the isolated cDNA segments capture an unpatentable law of nature - the genetic code. Since no inventive step has been added to the genetic code in claim 2, the cDNA of claim 2 constitutes unpatentable subject matter under Prometheus.
The Federal Circuit’s disregard in Myriad Genetics of the laws of nature threatens to eviscerate the public domain of basic scientific knowledge.
Keywords: gene, patent, DNA, Myriad
JEL Classification: K19, K20, K30, K41
Suggested Citation: Suggested Citation
Rogers, Douglas L., After Prometheus, Are Human Genes Patentable Subject Matter? (December 19, 2012). Duke Law & Technology Review, Vol. 11, No. 434, 2013; Ohio State Public Law Working Paper No. 181. Available at SSRN: https://ssrn.com/abstract=2191523 or http://dx.doi.org/10.2139/ssrn.2191523