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The Supreme Court's Myriad Decision: Where Does It Leave the
2013-07-05
 

IP News

Home > IP News

The Supreme Court's Myriad Decision: Where Does It Leave the

2013-07-05

The Supreme Court's Myriad Decision: Where Does It Leave the "Inventive Concept" Test?

Perhaps one of the most intriguing issues coming out of the Supreme Court's Myriad decision is whether it leaves any room for the "inventive concept" test raised by earlier Supreme Court decisions, includingMayo v. Prometheus.  Or is inventive concept merely limited to method claims?  Compare the mental gymnastics that the Federal Circuit had to go through for the CLS Bank v. Alice decision.  Where is any of that in this Supreme Court decision?

For cDNA claims, Justice Thomas issued nothing more than the following terse statement:

cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments.  As already explained, creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring.  Petitioners concede that cDNA differs from natural DNA in that "the non-coding regions have been removed."  Brief for Petitioners 49.  They nevertheless argue that cDNA is not patent eligible because "[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician."  Id., at 51.  That may be so, but the lab technician unquestionably creates something new when cDNA is made.  cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived.  As a result, cDNA is not a "product of nature" and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA.  In that situation, a short strand of cDNA may be indistinguishable from natural DNA.

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