July 24, 2014

Supreme Court Grants Myriad’s Petition for Cert.

I feel a bit like Al Pacino in “The Godfather – Part 3” when he shouts, “Just when I thought I was out, they pull me back in!” (Repeated memorably by Silvio Dante in “The Sopranos”.) Now the Supreme Court has granted cert. to resolve one question: “Are human genes patentable?” In isolation, presumably, since I have been explaining to patent “civilians” for years that no one can patent a gene – or any other chemical – as it occurs in situ in the human body and then demand a royalty from anyone using the gene to live.

Of course, defining what the term “human gene” means will be a major part of the opinion. If you would like to see a cogent review of the steps necessary to obtain the ca. 100,000 bp BRCA1 gene (including introns and exons) AND then the steps needed to produce the mRNA and reverse transcribe it into “Myriad-made” BRCA1 cDNA having only about 5914 bp (and no introns), take a look at the amicus brief filed by Gilead on Oct. 29, 2010 (s. 2). It certainly impressed Judge Moore, who came close to splitting with Judge Lourie and finding that the isolated BRCA 1 gene (100K bp) is a patent-ineligible natural product, while the cDNA (eg, claim 2 of the ‘282 patent) is a non-naturally occurring product. Perhaps that is the ultimate holding that awaits us, but it could be worse.

The legal answer to this question will duck the broader question of whether or not any “genes” isolated and purified from any creature – plant or animal – are patent-ineligible natural products. Given the importance of this question to, say, agricultural biotechnology, it may not be long before the question presented is much, much broader.

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author


Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.


Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the