Angela Foster, PhD, Esq. Law Offices of Angela Foster


23 Οκτ 2013 (πριν από 4 χρόνια και 8 μήνες)

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Angela Foster, PhD, Esq.

Law Offices of Angela Foster

Where Science,

Law &

Ethics Meet

For over 30 years, many scientist opposed the granting of
gene patents:

Restricts Research

Restricts Access to Genetic Testing

Biotechnology Industry argues that such patents are needed
to encourage investments in genetic research.

Delay in Disseminating Information

Researchers waiting for patent approval are less likely to share
information until the patent is granted.

Scientists are unlikely to share material or information to ensure they
would be entitled to the patent rights as well as gain the financial


Gene patents provide incentive to develop and research new

Because of patent term expiration, the information is ultimately
disseminated to the public

Submarine patents

Researchers waiting for patent approval are less likely to
share information until the patent is granted.

Scientists are unlikely to share material or information to
ensure they would be entitled to the patent rights as well as
gain the financial rewards.

Hinders development of new diagnostic tests and medications

Patent exclusivity rights prevent other organizations from
testing for a patented gene.

Experimental Use Exception

limited to research strictly for philosophical inquiry,
curiosity or amusement with no commercial use

Compromise of autonomy and confidentiality

Patients are potential "treasure troves" for researching
lucrative genes.

Struggle with balancing the need for patent protection to
encourage the necessary research for advancements in
medical technology, while maintaining patient integrity.

Patent holders are granted exclusive rights to
make, use, and sell their invention to the exclusion
of others in exchange for disseminating the
information in the public domain.

invention must be a machine, manufacture, process, or
composition of matter, or an improvement thereof, in order
to be eligible for patenting.

An invention
be an abstract idea, physical phenomena,
or product of nature.

Mathematical formulas, laws of nature, or natural phenomena such as a
mineral or plant organism, even if newly discovered.

However, methods and products
abstract ideas,
natural phenomena, and laws of nature to perform a real
world function
be patentable

Supreme Court in
Diamond v.

held that a living


genetically engineered

bacteria capable of
breaking down crude oil

is patentable subject matter.

Living organisms were considered to be “products of nature,”
specifically excluded from the definition of patentable subject
matter under section 101 of the Patent Act.

Because a bacterium such as that described by

not found anywhere in nature, its creation constitutes a
patentable “manufacture” or “composition of matter” under
section 101.

Davis v. H.K.



Because the purified adrenaline was
from the
suprarenal gland and
in a form that was more
stable and concentrated, it could be considered more
valuable both therapeutically and commercially.

Funk Brothers Seed Co. v.



Each species of bacteria in the mixture could benefit certain specific plant
species it might infect by extracting nitrogen from the air and rendering it
available for the infected plants to use.

No single species could infect the roots of all types of plants.

Rather, each species could infect only a particular plant group, and
different bacteria species could exhibit mutually inhibiting effects when
applied to plants in combination.

The patentee had created a mixture of bacteria capable of inoculating the
seeds of plants belonging to several groups.

Patents cannot issue for the discovery of the phenomena of nature.

Merck & Co. v. Olin

Chemical Corp

Isolated a vitamin B

substance from microorganisms that was
identical to the vitamin B

found in the calf ’s liver.

Because the active substance was unidentified and unknown,
no one had produced a “comparable” product to the calf ’s

Compound was far more than simply a purified version of the
natural substance.

Amgen, Inc. v. Chugai Pharmaceutical

A purified and isolated DNA sequence encoding the protein,
human erythropoietin (EPO), which stimulates the production of
red blood cells.

Amgen invention did not claim “DNA sequences encoding the
erythropoietin” as previously known, but rather, “a purified and
isolated DNA sequence consisting essentially of a DNA sequence
encoding the erythropoietin.”

The claimed invention was a “purified and isolated” DNA clone
versus actual DNA sequences

A patent claim directed to an isolated and purified DNA molecule could
cover a gene excised from a natural chromosome or a synthesized DNA

An “isolated and purified” DNA molecule that has the same sequence
as a naturally occurring gene is eligible for a patent because either:

An excised gene is eligible for a patent as a composition of matter
or as an article of manufacture because that DNA molecule does not
occur in that isolated form in nature or

Synthetic DNA preparations are eligible for patents because their
purified state is different from the naturally occurring compound.

Prometheus Labs., Inc. v. Mayo Collaborative Services

A method for determining

the most effective dosage of a drug,

intended to treat

disease, an immune mediated gastrointestinal


Determine metabolite

levels of

in clinical samples

taken from

District Court held

because correlating drug metabolite levels with
therapeutic efficacy and toxicity

was a natural body process and merely

necessary data
gathering steps.

Federal Circuit disagreed:

determining metabolite levels” was “transformative” because the “levels cannot
be determined by mere inspection.

The step included growing cells.

Myriad patent covered mutations to the

genes; use of these mutations for diagnosis and prognosis
for breast and ovarian cancer; screening for cancer
predisposition; and development of therapeutic cancer

The plaintiffs argued that the isolated DNA and sequence for

are “products of nature” and

subject matter.

District Court agreed:

In order to be patentable under section 101, “isolated” DNA must be
“markedly different” from naturally occurring DNA.

District Court agreed:

In order to be patentable under section 101, “isolated” DNA must be
“markedly different” from naturally occurring DNA.

Because isolated DNA containing naturally occurring sequences is not
“markedly different” from the native DNA, it fell within the “product of
nature” exception to patentable subject matter under section 101.

Because the “fundamental quality” of DNA consists of the physical
embodiment of biological information, the isolated DNA and naturally
occurring DNA possess the same “fundamental quality” and therefore are

markedly different.

Myriad method claim:

comparing or analyzing gene sequences to identify the
presence of mutations corresponding to a predisposition to
breast or ovarian cancer.

District Court rejected method claims based on “machine or
transformation” test.

A claimed process or method must be tied to a particular
machine or apparatus, or it transforms a particular article into
a different state or thing.

Myriad method claims also did not qualify for patentability
subject matter under section 101 because claims comprising
comparisons of the
sequences to determine whether a
mutation is present refer only to an “abstract mental process.”

Federal Circuit reverses District Court:

Claims covering isolated breast cancer DNA sequences are patentable
because the isolated DNA molecules are chemically cleaved from the
native DNA

markedly different characteristic.

Claims covering involving comparing or analyzing gene sequences were

because they were abstract mental processes without any
transformation steps.

Court held Myriad’s for screening potential cancer therapeutics via
changes in cell growth rates of transformed cells is patentable.

Supreme Court reverses the Federal Circuit

Method for comparing the relationship between the
concentration of blood metabolites and optimal dosages of
a therapeutic drug:


mere recitation of laws of nature

Supreme issues 3
step Inquiry:

Is the claim drawn to a process? If yes:

Does the claim focus on a natural principle? If yes:

Is the claim more than a recitation of the natural principle
and instructions to “apply it”?

On appeal, Myriad challenged the grant of standing to the 20
plaintiffs in the case:

Public interest groups


Health insurance plaintiffs

Declaratory Judgment

Alleged or potential infringer ask the court to rule they are not liable for
patent infringement because:

Do not infringe

Patent is invalid or unenforceable.

A court has jurisdiction to hear an action for declaratory
judgment only if at the time the action is filed there is an
actual controversy.

Historically, this meant that a plaintiff must have a reasonable
belief that it would be sued by a patent owner for
infringement based on actions of the plaintiff.

When multiple plaintiffs are present, the court must find at
least one plaintiff
defendant relationship that meets this

No standing

Vacation of Southern District of New York’s decision that Myriad BRCA
genes are not patentable.


Courts could face a significantly higher risk of declaratory judgment
actions by plaintiffs who have had little or no contact with the patentee
but who claim a right to invalidate the patent.

Federal Circuit ruled that only the research of one scientist
was hampered by Myriad's patent.

Other organizations lacked standing

Simply disagreeing with the existence of a patent on isolated DNA
sequences or even suffering an attenuated, non
proximate, effect from
the existence of a patent does not meet the declaratory judgment

Other parties h
ad made no preparation to undertake
potentially infringing activities.

The question of whether human genes and the information
they convey are patentable is of paramount importance to
the future of patent law, the advancement of medical
science and the health of patients.

Patents on “isolated” DNA are invalid under section 101.

The method claim upheld is inconsistent with the decision

Holding that petitioners lacked standing unless they were
personally threatened by Myriad imposed a rigid standing
requirement contrary to the Supreme Court





Foster, PhD, Esq.


Offices of Angela Foster


Birchwood Court


Brunswick, New Jersey 08902

Telephone: 7