In a widely anticipated move, the United States Supreme Court
(USSC) has agreed to review the patent-eligibility of isolated
The USSC will hear an appeal from the United States Court of
Appeals for the Federal Circuit (CAFC) August 2012 decision in
Association for Molecular Pathology vs. Myriad Genetics
Inc. In that decision, the CAFC
found that Myriad's claims to isolated DNA encoding two
human genes, BRCA1 and BRCA2, were patent-eligible.
The USSC will address only one question on appeal: "Are
human genes patentable?". The two other questions in the suit
in AMP v Myriad - relating to the patentability of diagnostic
method claims, and whether or not the plaintiffs had standing to
sue - are thus now finally decided. The USSC's refusal to
reconsider these questions is consistent with their earlier opinion
on medical method patents in Prometheus vs. Mayoin March 2012.
Myriad are likely dissatisfied with the way the question on
appeal has been phrased, given they have never asserted their
claims cover the BRCA genes when in a human being. There is,
nevertheless, keen interest now that the USSC is set to finally
decide the issue at the heart of this contentious litigation - are
isolated DNA molecules patentable subject matter?
Those with an interest in this area can look forward to June
2013, when the USSC is expected to hand down its ruling - a ruling
that will hopefully bring some clarity to the law surrounding gene
And in other news...
The US Federal Circuit has for the first time had an opportunity
to decide the patent-eligibility of medical method claims in a
In PerkinElmer, Inc. v. Intema Ltd., the Court found
that claims directed to prenatal diagnosis of Down's syndrome
were not specific enough to avoid "risk[ing] the broad
preemption of 'the basic tools of scientific and technological
work'", and were, in essence, a "patent upon the
natural law itself".
So, to minimise the risk of ineligibility, those pursuing claims
to diagnostic methods should ensure their claims:
include a patentable feature in addition to the targeted
correlation between marker and disease, and
are sufficiently specific - for example, are focussed on a
particular implementation of the diagnostic method.
While neither decision is directly relevant to current New
Zealand or Australian IP law, it will likely inform developing
jurisprudence in both countries over time. Both decisions will,
however, clearly affect New Zealand and Australian applicants
pursuing relevant patents in the US.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
The Policy stresses on the need for a holistic approach to be taken on legal, administrative, institutional and enforcement issues related to IP.
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