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 prison sentences for ex-Samsung executives for trade secrets violation and an opposition filed by Taylor Swift were also among the top talking points
A multijurisdictional claim filed by InterDigital and a new spin-off firm in Germany were also among the top talking points
Duarte Lima, MD of Spruson & Ferguson’s Asia practice, says practitioners must adapt to process changes within IP systems, as well as be mindful of the implications of tech on their practices
Practitioners say the UK Supreme Court’s decision could boost the attractiveness of the UK for AI companies
New awards, including US ‘Firm of the Year’ and Latin America ‘Firm to Watch’, are among more than 90 prizes that will recognise firms and practitioners
DWF helped client Dairy UK secure a major victory at the UK Supreme Court
Hepworth Browne led Emotional Perception AI to victory at the UK Supreme Court, which rejected a previous appellate decision that said an AI network was not patentable
James Hill, general counsel at Norwich City FC, reveals how he balances fan engagement with brand enforcement, and when he calls on IP firms for advice
In the second of a two-part article, Gabrielle Faure-André and Stéphanie Garçon at Santarelli unpick EPO, UPC and French case law to assess the importance of clinical development timelines in inventive step analyses
Public figures are turning to trademark protection to combat the threat of AI deepfakes and are monetising their brand through licensing deals, a trend that law firms are keen to capitalise on
Gift this article