University v. University
August 28, 2011
On July 29, 2011, a Federal Circuit panel decided Association For Molecular Pathology v. Myriad Genetics (Fed. Cir. 2011). This is an important case for patent law, as it relates to genetics. The short version is that: (i) isolated DNA is eligible for patent protection; (ii) claims directed to working with the isolated DNA, in non-specific ways, are not eligible for patent; and (iii) a claim directed to a specific method of using the isolated DNA for cancer screening is eligible for patent. It should be kept in mind that “eligible for patent” is not the same as “patentable,” and the isolated DNA and cancer screening method must still be sufficiently new and creative to sustain a valid. This decision is reported more fully in a Bond, Schoeneck & King Information Memo. One interesting aspect is that people who work for universities appear on both sides. This is a nice thing about patent law, generally, and it is something that carries over into the slice of patent law dominated by research universities – there is not really a “Patent Plaintiff’s Bar” and a “Patent Defendant’s Bar.” Patents are a double edged sword, and a research university could find itself on either side of a given patent, for or against. This really brings some balance, nuance and moderated synthesis to patent law that one doesn’t always find in other areas of the law. The Association For Molecular Pathology case is a good example of this, whether or not one agrees with where exactly the Federal Circuit has drawn the line on the patent-eligibility of DNA and its associated scientific and medical methods.