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Court Upholds Gene Patents

Biotechnology: Appeals court finds that isolated DNA is eligible for patent protection

by Glenn Hess
August 23, 2012 | A version of this story appeared in Volume 90, Issue 35

Credit: Shutterstock
Court reaffirms that isolated DNA is protected intellectual property.
Stock image of a DNA representation.
Credit: Shutterstock
Court reaffirms that isolated DNA is protected intellectual property.

In a victory for the biotechnology industry, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit has reaffirmed its earlier ruling that isolated human genes can be patented.

In a 2-1 decision, the court on Aug. 16 upheld Myriad Genetics’ right to hold patents on BRCA1 and BRCA2, two genes linked to breast and ovarian cancers. The patents allow the Salt Lake City-based company to be the only U.S. commercial provider of diagnostic tests for hereditary forms of the diseases.

A federal judge in 2010 ruled that Myriad’s patents were invalid because human DNA molecules are “products of nature” and thus ineligible for patent protection. The Federal Circuit reversed that decision in 2011.

But earlier this year, the Supreme Court ordered the same appeals court to reconsider its findings after the high court ruled in a similar case (Mayo Collaborative Services v. Prometheus) that companies cannot patent observations about natural phenomena.

After rehearing the Myriad case, the Federal Circuit said the Supreme Court’s ruling does not apply to isolated DNA. “Permitting patents on isolated genes does not preempt a law of nature,” Circuit Judge Alan D. Lourie declared in the court’s majority opinion.

“The isolated DNA molecules before us are not found in nature,” Lourie wrote. “They are obtained in the laboratory and are man-made, the product of human ingenuity. While they are prepared from products of nature, so is every other composition of matter.”

The American Civil Liberties Union, which filed the original lawsuit challenging Myriad’s patent claims, says the court’s decision “prevents doctors and scientists from exchanging their ideas and research freely.”

Human DNA “does not belong to any one company,” says ACLU staff attorney Chris Hansen.

Myriad welcomed the ruling. “Importantly, the court agreed that isolated DNA is a new chemical matter with important utilities which can only exist as the product of human ingenuity,” says Peter D. Meldrum, the company’s CEO.

The Biotechnology Industry Organization, a trade association, has argued that a ruling against gene patenting could have a devastating effect on future innovation by discouraging investment in expensive and time-consuming research at U.S. universities and biotech companies.


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