Court Victory Helps Biotechs Better Define Patents

September 3, 2012 – In The News
NJ Biz

In a decision hailed as a victory for biotech, the U.S. Court of Appeals for the federal circuit recently ruled, for the second time, that the isolated DNA and cancer drug screening processes of a Utah-based company are patentable inventions. The case brought to the surface the blurry line between natural biology and biological invention, causing many ethical and legal questions to arise.

In this case, Medical Pathology v. Myriad Genetics Inc., two types of Myriad patents were at stake: composition of matter and method claims. Though the composition of matter argument held up as an invention, the method claims of comparing genes was deemed an abstract idea.

Gerard P. Norton, Ph.D., chair of the firm’s Intellectual Property department, noted, “It was really a determining, not a transformative, step. It’s an observation.” Norton argues that for biotech companies, the distinction is clear: If an “invention” involves a transformative step, it can be patented; if not, it can’t. He also remarked that patent attorneys should bear that in mind when drafting patent applications, stating, “When faced with similar claims, you want to be able to talk to the inventor and get some type of transformative claim.”