Midyear Meeting

Resolution paves way for ABA amicus brief on broader issues in SCOTUS gene patenting case

A resolution approved on Monday by the ABA House of Delegates provides guidance for an ABA amicus brief in a Supreme Court case on the patenting of isolated human genes associated with increased risk of breast and ovarian cancer.

The U.S. Supreme Court is considering just one issue in the case: whether isolated genes are “human-made inventions” that can be patented, or “products of nature” that may not be patented. The ABA House of Delegates took a position related to that question in February 2011 when it opposed a per se patent disqualification of isolated DNA compounds.

Resolution 101A, approved on Monday, addresses broader patent issues for inclusion in the ABA’s amicus brief because of the possibility the justices will issue a more expansive opinion. The case is Association of Molecular Pathology v. Myriad Genetics.

The U.S. Court of Appeals for the Federal Circuit had upheld the patent held by Myriad Genetics, finding that isolated DNA is eligible for a patent. The Federal Circuit also ruled on a separate issue that the Supreme Court opted not to consider—the patent eligibility of a Myriad method for screening compounds to determine their use for cancer treatment using an altered gene. The Federal Circuit found the process to be patent eligible because it involves the use of a cell transformed with an altered gene, and thus is not a prohibited law of nature, natural phenomena or abstract idea.

Resolution 101A supports the Federal Circuit’s position. A claimed process is patent eligible under Section 101of the patent statute, the resolution says, when it involves “a specific application of a law of nature, natural phenomenon, or abstract idea” or, alternatively, when it “requires or involves a transformation of matter into a different state or thing.”

The resolution also takes the position that questions regarding patent eligibility under Section 101 of the patent statute—a section that opens the door to the possibility of obtaining a patent—should be decided independently from other sections of the law that determine patentability based on obviousness, novelty and claim definiteness.

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