US Supreme Court to clarify patent eligibility of genes

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US Supreme Court to clarify patent eligibility of genes

The Supreme Court of the United States agreed on Friday to hear the Myriad case, which could provide much-needed clarification on the patent eligibility of genes

The lawsuit, The Association for Molecular Pathology v Myriad Genetics, concerns biotech company Myriad's patent claims relating to isolated DNA of the BRCA 1 and BRCA 2 genes, which can help doctors evaluate a patient's risk of breast cancer and ovarian cancer.

Myriad's claims also cover all possible mutations of the BRCA 1 and BRCA 2 genes and the test for the mutations. At present, scientists cannot perform this test without permission from Myriad.

The Supreme Court will reconsider a previous finding by the Court of Appeals for the Federal Circuit, which concluded that Myriad's composition of matter claims on the genes can be patented under Section 101.

The Federal Circuit initially decided the case in July 2011, overturning a previous district court ruling which found that Myriad's claims relating to isolated DNA molecules concern patent-ineligible products of nature. It also reversed the district court's conclusion that Myriad's method claim for analysing changes in the growth rates of transformed cells to test for possible cancer therapeutics is a scientific principle, and thus cannot be patented.

However, the Federal Circuit agreed with the district court's conclusion that Myriad's method claims for comparing DNA sequences are patent-ineligible "abstract, mental steps".

The plaintiffs later appealed to the Supreme Court, but the case was returned to the Federal Circuit in March this year following the Supreme Court's decision in Mayo v Prometheus.

Despite the Mayo v Prometheus decision, the Federal Circuit once again ruled in favour of Myriad in August. In September, the American Civil Liberties Union (ACLU) filed a petition asking the Supreme Court, for the second time, to reconsider the case. The Supreme Court is expected to rule on the matter by the end of 2013.

more from across site and SHARED ros bottom lb

More from across our site

AI, cybersecurity and data practice group will provide clients with legal guidance around AI alongside a 'deep technical foundation’ in IP
Lawyers at Vondst and Biopatents say a ruling concerning the protected status of trade secrets could see the UPC flooded with requests to prevent access to confidential information
Sharad Vadehra of Kan & Krishme discusses why older IP firms still have an edge over up-and-coming boutiques and how the firm is using AI to provide quick and cost-effective service
Lawyers at Appleyard Lees share how they picked apart a plant breeder’s infringement claims concerning the ‘Tango’ mandarin
A further decision on long-arm status, and a new hire for Pentarc in Germany from Taylor Wessing were also among top developments
The US decision marks a rare grant of a request under the Uniform Fraudulent Transfer Act in a patent case
Stobbs has applied to strike out a contempt of court application filed against the firm and two of its lawyers
With trademark volumes surging, trademark teams need to think beyond traditional clearance searches, towards a continuous, intelligence-led workflow, says Meghan Medeiros of Corsearch
Brazilian in-house counsel say law firms’ technology investments have not translated into tangible benefits, meaning tech use is a minor factor when selecting advisers
A lack of comfort among some salaried partners shows why law firms must actively foster inclusion, not merely focus on diversity mandates
Gift this article