On April 15, 2013, the U.S. Supreme Court heard arguments in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al. regarding whether an isolated DNA molecule is patentable. The Court’s decision in this case could have a significant impact on the validity of existing patents relating to isolated DNA as well as the biotech industry’s incentive to invest in this technology.

Brinks Hofer’s Carolyn Brougham attended the arguments. “During the hearing, the justices appeared to be skeptical of patent eligibility of an isolated DNA molecule,” said Ms. Brougham. “It appeared that the justices believed that isolating a DNA molecule was similar to isolating a natural ingredient found in a cookie, and since that ingredient is not patentable, the isolated DNA molecule likewise should not be patentable,” said Ms. Brougham. “On the other hand, the justices appeared to be uncomfortable ruling that isolated DNA molecules are not patentable, because doing so may significantly decrease the biotech industry’s motivation or incentive to invest in research regarding this technology. The justices recognized that, without this research, the public could be harmed, because they would not receive the numerous potential benefits resulting from this research,” said Ms. Brougham.

“While it is difficult to say with certainty what the Court’s ultimate decision will be, I would not be surprised if the Court adopts a middle ground approach – such as ruling that synthetic (or man-made) DNA molecules may be patentable, but naturally occurring DNA molecules are not patentable,” said Ms. Brougham. The Court’s decision is expected by June 30, 2013.