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  • Writer's pictureKirk Hartley

Gene Patents and Myriad in Light of Prometheus – The Big View, and Comments from Biotech Paten

Biotech patent bloggers are starting to weigh in on the Prometheus decision rejecting a claim to a patent for providing medical advice. The Genomics Law Report includes thoughtful commentary and concludes – I’d say – that Myriad’s patent claims are dead in terms of any ability to exclude others from sequencing genes and providing answers to patients. On the other hand, the post at Patent Docs is a disappointment as it rants against Justice Breyer in particular, and flogs the entire Court for not deferring to the purported analytic wisdom of the Federal Circuit’s majority view derived from patent-think.

In short, as indicated by my post yesterday, I’d say: Bravo for the Court. It rejected narrow "patent- think" and instead addressed the subject from the proper perspective: patent law is subject to broader constitutional principles, and patent law ultimately will be counter-productive if it impedes scientific progress. Justice Robert is famed for wanting to provide certainty to business, and it seems plain the Court’s message in Prometheus is that it will not sustain patents that are simply statements of medical/scientific conclusions following from factual analysis. Accordingly, the logical outcome is that patents will not be allowed to stop gene sequencing (analysis of facts about something inside a body) and reporting to persons the conclusion on whether they have one or more genetic mutations of potential medical importance.

Overall, It should be obvious that there are huge differences between awarding patents for creating new machines or new creatures, as contrasted against awarding patents for reporting on the medical/scientific conclusion that follows from using well-known scientific rules to analyze facts about conditions inside a person’s body. But the Federal Circuit could not "get" that obvious distinction. Happily, that’s why the views of that specialty court are subject to review by a Supreme Court comprised of judges who do not spend all day thinking through the lens of patent law, and instead bring to bear a broader view of the constitution, science and the world.


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