On June 13, 2013, the Supreme Court rendered its decision in the landmark Myriad case, holding that naturally occurring DNA segments are not patentable, but synthetic DNA segments are patent eligible based on the patent eligibility requirement of 35 U.S.C. 101 which prevents patents on products of nature. It is important to further recognize that methods of using naturally occurring DNA or non-natural methods of producing natural DNA are still patent-eligible.
The full implications of this decision will take years to determine, as lower courts are confronted with variations of the fact patterns in future cases and render new decisions and importantly, as the Patent Office issues guidance and interprets how Myriad will be applied during examination of patent applications. Stay tuned as more guidance becomes available.
For now, while the Myriad case may cast doubt on a very small subset of nanotech patent claims, the commercially most important areas have likely been preserved as patent eligible. In most cases, a pure naturally occurring nanotech material is not claimed alone in a form isolated from nature. To the contrary, it may be claimed as a method of producing large quantities of the natural nanomaterial or as a method of using it or as a combination product where the natural nanomaterial is combined with other non-natural components to produce, for example, a semiconductor device. These types of claims are unlikely to be impacted by the Myriad decision, so we can expect limited impact on nanotech.