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April 30, 2012


Isolated DNA Claims: Mayo Collaborative Services is irrelevant. The Supreme Court’s 1980 decision in Diamond v. Chakrabarty (man-made living organism is patent-eligible) is far more analogous in terms of the claimed subject matter, and thus controls, not Mayo Collaborative Services. Unlike the characterization of the methods in Mayo Collaborative Services, these isolated DNA sequences are not “laws of nature,” or merely “laws of nature.”

Claim 20 of '282 patent (method for screening potential cancer therapeutics): Mayo Collaborative Services is distinguishable for at least the reasons given in the original AMP decision which unanimously upheld Claim 20. The claimed method requires that the host cell with the altered BRCA1 gene be grown in the presence and absence of the compound being tested as a prospective cancer therapeutic, with a slower growth rate in the presence of the compound indicating a cancer therapeutic. If Claim 20 can't pass the patent-eligibility threshold of 35 USC 101, it's hard to see how any drug screening method can.

There shopuld be no effect on the method claim either. Method claim should withstand Mayo/Classen/ Flook/ point of novelty SCT test because the step of exposing the cell is novel since the cell itself is novel.

Likely it's taboo for me to say this on a blog for patent lawyers, but I'm glad the Supreme Court ruled as it did in Prometheus. It will be interesting to see how the Myriad patent litigation fares in light of the high court's ruling.

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