On November 30, 2012, the Supreme Court granted certiorari in part in Association for Molecular Pathology v. U.S. Patent and Trademark Office, 689 F.3d 1303 (Fed. Cir.), cert. granted in part sub nom. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 694 (2012) (No. 12-398), to address whether human genes are patentable.  In March 2012, the Court vacated and remanded the Federal Circuit’s holding in the case that claims for isolated DNA sequences are patentable subject matter under 35 U.S.C. § 101 .  Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 132 S. Ct. 1794 (2012) (mem).

The Supreme Court remanded for reconsideration in light of March 20 decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), in which the Court held that claims for a method of measuring metabolites in the blood stream were invalid because the claimed point of novelty was an unpatentable law of nature.    On remand in Myriad, the Federal Circuit again held that the claims covering isolated DNA sequences were patentable subject matter, even in light of the Supreme Court’s decision in Mayo.  Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 689 F.3d 1303 (Fed. Cir. 2012).

The Federal Circuit reasoned that Myriad’s composition claims to “isolated” DNA molecules are patent eligible because each of the claimed molecules represents a “nonnaturally occurring composition of matter.”  Id. at 1309.  Myriad appealed the decision to the Supreme Court asking for review of three different issues, but the Court granted certiorari with regard to only one issue – whether human genes are patentable.   Oral arguments in the case are set for April 15, 2013.