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 2025

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

Frederick Lee has rejoined Boies Schiller Flexner, bolstering the firm’s capabilities across AI, media, and entertainment
Nirav Desai and Sasha S Rao at Sterne, Kessler, Goldstein & Fox explore how companies’ efforts to manage tariffs by altering corporate structures can undermine their ability to assert their patents and recover damages
Monika Żuraw, founder of Żuraw & Partners, discusses why IP should be part of the foundation of a business, and taking on projects that others walk away from
Lawyers say attention will turn to the UK government’s AI consultation after judgment fails to match pre-trial hype
Susan Keston and Rachel Fetches at HGF explain why the CoA’s decision to grant the UPC’s first permanent injunction demonstrates the court’s readiness to diverge from national court judgments
IP, M&A, life sciences and competition partners advised on deal that brings together brands such as ‘Huggies’ and ‘Kleenex’ with ‘Band-Aid’ and ‘Tylenol’
Stability AI, represented by Bird & Bird, is not liable for secondary copyright infringement, though Fieldfisher client Getty succeeds in some trademark claims
Plasseraud IP says it is eyeing AI and quantum computing expertise with new hire from Cabinet Netter
In the fifth episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss the ‘Careers in Ideas’ network and how to open access to the profession
McGuireWoods’ focussed experimentation and disciplined execution of AI tools is sharpening its IP practice
Gift this article