Standing on shaky ground: US patent-eligibility of isolated DNA and genetic diagnostics after AMP v USPTO - Part IV1

Abstract

As discussed in the previous issues of QMJIP, the Federal Circuit's decisions in Myriad I2 and II3 appear to provide considerable prospects for patentees, as clever claim drafting may still help to avoid most patent-eligibility traps set by the much debated US Supreme Court decision in Prometheus.4 Yet, the split opinions also contain elusive reasoning by each of the three judges. The questions left open by Prometheus and the remaining split at the Federal Circuit with regard to inter alia DNA-related product claims provide excellent fodder for another US Supreme Court review with potentially broad implications for biotech patents. Acknowledging the criticism of excessively broad upstream patent claims and referring briefly to corresponding European debates, Part IV of this series finally discusses the recent developments from a broader innovation-policy perspective. Highlighting the mitigating effects of additional factors, such as higher thresholds for other patentability criteria, scientific advances, post-grant mechanisms and the dynamic qualities of biomedical innovation, the authors note that overly static eligibility doctrines entail considerable risks for technological progress. While it is essential that the Supreme Court further clarifies its principles, the authors urge it not to categorically close the 'patent-eligibility door' to important emerging technologies. © 2013 Edward Elgar Publishing Ltd.