David C. Berry, professor at Thomas M. Cooley Law School and director of the school’s Graduate Program in Intellectual Property Law, noted that the recent Supreme Court decision regarding Myriad answers some questions about patentability of genetic inventions, but leaves others unanswered.
“The Myriad decision again shows the Supreme Court’s efforts to clarify the Patent Act, which has been criticized recently by many commentators as allowing too many patents and conferring too many rights to patent holders. Although the Patent Office has been granting patents on isolated human genes for many years, the Court ruled that those inventions are nothing more than naturally occurring substances, and should be available for all researchers to use without restriction. Although patents may be available on many related technologies, such as cDNAs, specific methods of exploiting the DNA, and genetic testing equipment, the Myriad decision will make it harder for companies conducting research in human genetics to protect their discoveries from competitors. The Federal Circuit will now have to apply the broad principles identified in the Myriad decision to other technologies.”