DNA Patenting Again At Risk Before the Federal Circuit

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After an order from the Supreme Court to reconsider the case in light of its decision in Mayo v. Prometheus, a panel of the Federal Circuit Court of Appeals heard arguments in Association for Molecular Pathology v. Myriad Friday. 

The issue is whether the Supreme Court's ruling in Mayo, which found method claims utilizing natural laws to be unpatentable, should apply to product claims for DNA isolated from living organisms.

On the case's first pass before this appellate panel, the Court held, 2-1, that isolated DNA claims were patentable subject matter because the claimed molecules have "a distinctive chemical identity" from their counterparts in the organism's genome.  Myriad argues that the original decision is correct because Mayo addressed only process claims, and relied only on process claim precedent.  AMP argues that the rationale behind Mayo should be broad enough to prevent patenting of naturally occuring molecules which have been "trivially" modified from their native state.

According to most of the commentaries we've seen, during oral argument the panel seemed entrenched in their original positions.  There was little to suggest that either of the majority (Lourie and Moore) were inclined to extend Mayo.  Indeed, given the tens of thousands of isolated DNA patents in force, it would be hard to imagine this panel upsetting the industry's settled expectations.  Of course, the panel could surprise, or either the Federal Circuit en banc or the Supreme Court could decide to wade in.