Ruling that one plaintiff had standing to seek a declaratory judgment as to the patent eligibility of certain genetic discoveries, the Federal Circuit Court of Appeals has once again reversed in part and affirmed in part a lower court’s determination that isolated DNA molecules and methods of comparing molecules to determine whether a patient’s genes have mutations that could cause breast and ovarian cancer were not patent eligible. The Ass’n for Molecular Pathology v. U.S. Patent and Trademark Office (Myriad Genetics, Inc.), No. 1020-1406 (Fed. Cir., decided August 16, 2012).

The Federal Circuit’s July 2011 ruling, which was reversed by the U.S. Supreme Court for reconsideration in light of Mayo Collaborative Services v. Prometheus, Inc., 132 S. Ct. 1289 (2012), is summarized in Issue 18 of this Bulletin.

The court found that nothing in Mayo changed its earlier ruling that Myriad’s composition claims were all patent eligible because they are products of man, involving skill, knowledge and effort to create. The court also found that nothing in Mayo changed its determination that most of Myriad’s method claims with the exception of one, were patent-ineligible because they claim “only abstract mental processes.” Judge Kimberly Moore again concurred in part to explain that the longer strands of isolated DNA continue to present a “much closer case” on the question of patentability, but would allow them protection for policy reasons. As before, Judge William Bryson, concurring in part and dissenting in part, wrote separately to express his concerns over “whether an individual can obtain patent rights to a human gene.”