The Saga Continues in Two High-Profile Patent Cases In March, the U.S. Supreme Court issued its un

The Saga Continues in Two High-Profile Patent Cases
In March, the U.S. Supreme Court issued its unanimous decision in Mayo v. Prometheus Laboratories, which reversed the U.S. Court of Appeals for the Federal Circuit ruling and held that Prometheus’ two diagnostic method patents covering blood monitoring were not eligible for patent protection. On July 3, the USPTO issued a memorandum to all USPTO patent examiners implementing new procedures for examining process claims for subject matter eligibility in view of the Supreme Court decision in Mayo v. Prometheus. The USPTO memorandum explains that the new procedures are intended for analyzing process claims in which a law of nature, natural phenomenon, or naturally occurring relation or correlation is a limiting element or step.

One week after its landmark ruling in Mayo v. Prometheus, the Supreme Court sent another shockwave through the patent community by remanding Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al. to the U.S. Court of Appeals for the Federal Circuit for further consideration in light of the decision in Mayo v. Prometheus.

On June 15, the American Civil Liberties Union, the U.S. Department of Justice, and others filed third party amicus briefs challenging patents covering Myriad’s human breast cancer genes, BRCA1 and BRCA2. The amicus briefs argue that the isolated genes are not patent-eligible because they are not man-made inventions, but are simply products of nature.

On July 20, the Court of Appeals for the Federal Circuit heard oral arguments before a packed courthouse with the judges grilling attorneys for both sides. The eagerly anticipated Myriad decision will issue in a few months and will closely be watched by the biotechnology and diagnostic industries.