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

News of Nokia signing a licensing deal with a Chinese automaker and Linklaters appointing a new head of tech and IP were also among the top talking points
After five IP partners left the firm for White & Case, the IP market could yet see more laterals
The court plans to introduce a system for expert-led SEP mediation, intended to help parties come to an agreement within three sessions
Paul Chapman and Robert Lind, who are retiring from Marks & Clerk after 30-year careers, discuss workplace loyalty, client care, and why we should be optimistic but cautious about AI
Brantsandpatents is seeking to boost its expertise across key IP services in the Benelux region
Shwetasree Majumder, managing partner of Fidus Law Chambers, discusses fighting gender bias and why her firm is building a strong AI and tech expertise
Hady Khawand, founder of AÏP Genius, discusses creating an AI-powered IP platform, and why, with the law evolving faster than ever, adaptability is key
UK firm Shakespeare Martineau, which secured victory for the Triton shower brand at the Court of Appeal, explains how it navigated a tricky test regarding patent claim scopes
The firm’s managing partner said the city is an ‘exciting hub of ideas and innovation’
In our latest podcast, Deborah Hampton talks through her hopes for the year, INTA’s patent focus, London 2026, and her love of music
Gift this article