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« AbbVie Inc. v. Mathilda & Terence Kennedy Institute of Rheumatology Trust (Fed. Cir. 2014) | Main | Conference & CLE Calendar »

September 05, 2014

Comments

"Rather, the Full Court emphasized that the claim in question 'is to a compound; a nucleic acid. It is not a claim to information'."

It's refreshing that at least one court out there understands the basics of patent law. Any chance these judges can come stateside to give SCOTUS a tutorial?

@ Dan

Where in the BRCA1 patent does it say that the full length gene was in fact isolated as a discrete molecule? What procedures were used to fragment and cut the chromosomal DNA to give just the BRCA1 full-length sequence?

It has been said that the ruling in a case is based on the facts as found by the court. In US and in Australia the court found different facts.


Paul - you're asking a good question. The patent describes a process of manipulating yeast and bacteria into reproducing overlapping fragments of DNA, sequencing these cloned fragments, aligning the sequence information in a computer, thereby generating a computer representation of the human BRCA gene. So, the gene was cloned piecemeal in the laboratory and then assembled only in a computer; it was never extracted as a discrete unit from a human chromosome.

The ACLU's favorite metaphors, on the other hand, very deliberately relied on misleading notions of extraction or mining. "Gold plucked from a riverbed " and "kidneys cut from a human body," and a "BRCA gene "snipped" out of a person's chromosome." The better metaphor, perhaps, would have been a cloned kidney and synthetic gold, but that wouldn't have helped their case as much.
In any event, they got the U.S. judges to worry about patents on natural elements and extracted human body parts and other ghoulish things that nobody ever could or would want to patent. This really helped them get favorable rulings, but was pretty far from reality. Unfortunately, Justice Thomas's careless talk of "longstanding rules against patents on naturally-occurring things" then directly and predictably led to rampant rejections now in the USPTO of patent applications on vaccines, industrial enzymes, drug substances and other things having nothing to do with genes and diagnostics.

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