Patent-Eligible Subject Matter, Myriad

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2023)

McDonnell Boehnen Hulbert & Berghoff LLP on 9/14/2023

In those (in retrospect) halcyon days more than a decade ago (before Mayo, Myriad, Alice, and the subject matter eligibility quagmire arose), perhaps the most significant Supreme Court decision was KSR Int'l Co. v. Teleflex...more

Federal Circuit Weighs In On Patent Eligibility Of Isolated Vitamin

Foley & Lardner LLP on 2/23/2023

It has been a while since the Federal Circuit weighed in on the patent eligibility of so-called “natural product” claims. While the finding of non-eligibility in ChromaDex, Inc. v. Elysium Health, Inc. is not surprising, it...more

Justice Barrett to Bring Clarity to Patent Eligibility Law?

Fenwick & West LLP on 2/26/2021

Each time the U.S. Supreme Court has addressed patent eligibility, the law surrounding what can and cannot be patented has become murkier. Most recently, the wake of the Supreme Court’s Alice ruling has led to irreconcilable...more

Story Telling

McDonnell Boehnen Hulbert & Berghoff LLP on 3/29/2020

Patent law (and, consequently, patent lawyers) can be viewed as having at least a slightly tighter tether on concrete, factual reality than other areas of the law, at least to the extent that making patent-related legal...more

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

McDonnell Boehnen Hulbert & Berghoff LLP on 3/20/2020

The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc. The claims at issue fell into the...more

A Step-by-Step Approach to Patent Subject Matter Eligibility Reform

McDonnell Boehnen Hulbert & Berghoff LLP on 2/19/2020

There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more

Current State of Patent Eligibility and Potential Reform

Downs Rachlin Martin PLLC on 7/9/2019

Will there be patent eligibility reform following the Senate Committee hearings? Major points of contention during the hearings were (1) the patentability of human genes, (2) whether proposed changes to 35 U.S.C. § 112(f)...more

IP Hot Topic: The Draft Subject Matter Eligibility Bill: A Work In Progress

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/18/2019

On May 22, 2019, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representative Doug Collins (R-GA-9), Ranking Member of the...more

Patent Eligibility for “Natural” Food and Beverage Ingredients and Products

King & Spalding on 8/29/2018

Since the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), there has been considerable uncertainty regarding what constitutes patentable subject matter. In a...more

Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

Womble Bond Dickinson on 3/24/2017

We wrote earlier about the Supreme Court’s renewed interest in patent eligibility and seemingly unintended confusion between the patent eligibility requirements of 35 U.S.C. § 101 and the remaining patentability requirements...more

Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/30/2016

The U.S. patent system has long struggled to strike a balance that both encourages patent rights and prevents patent abuse. Finding that balance requires giving patent owners the right amount of patent enforcement power,...more

News from Abroad: IP Australia Releases Myriad Examination Guidelines

McDonnell Boehnen Hulbert & Berghoff LLP on 1/14/2016

Following the recent public consultation in view of the Australian High Court's decision in D'Arcy v Myriad Genetics ("Myriad"), IP Australia has released new Examination Guidelines for applications which may be affected by...more

Australian Patent Office Provides Patent Eligibility Guidance

Foley & Lardner LLP on 12/17/2015

The Australian Patent Office (IP Australia) has issued final patent eligibility guidance under the Australian High Court’s decision in D’Arcy v. Myriad Genetics, Inc. Where the USPTO extrapolated from the U.S. Supreme Court...more

Does a Nucleic Acid Constitute Patent Eligible Subject Matter Under Australian Law?

JD Supra Perspectives on 10/18/2015

Clearly the High Court has given an answer to a question, but was that question the one we anticipated? That in itself is an open question!...more

Australian High Court Rules Gene Patents Unpatentable

BakerHostetler on 10/14/2015

Like the United States Supreme Court, the High Court of Australia has determined that Myriad’s patents directed to purified and isolated DNA molecules encoding the BRCA genes are unpatentable. Indeed, the Australian Court...more

News from Abroad: Australian High Court Has Ruled in Myriad Gene Patent Case

McDonnell Boehnen Hulbert & Berghoff LLP on 10/9/2015

The Australian High Court yesterday unanimously overturned six lower court judges and dismissed some very careful reasoning to not only follow the U.S. Supreme Court in invalidating claims to the BRCA1 and 2 gene sequences,...more

News from Abroad: High Court Rules Myriad's BRCA Genes Not Patentable Subject Matter in Australia

McDonnell Boehnen Hulbert & Berghoff LLP on 10/9/2015

Just over one year after the Full Federal Court of Australia unanimously upheld an earlier Federal Court decision that naturally occurring nucleic acid molecules are patentable in Australia, the High Court of Australia has...more

Australia High Court Rules Against Gene Patents

Foley & Lardner LLP on 10/9/2015

Colleagues in Australia have been spreading the bad news: The High Court of Australia followed the lead (?) of the U.S. Supreme Court and determined that Myriad cannot patent the isolated BRCA1 gene in Australia. Thanks to...more

News from Abroad: Isolated Nucleic Acids Not Patentable in Australia

McDonnell Boehnen Hulbert & Berghoff LLP on 10/8/2015

D'Arcy v. Myriad Genetics Inc & Anor [2015] HCA 35 - The High Court of Australia today handed down its decision in D'Arcy v Myriad, deciding once and for all that isolated nucleic acids do not define patent-eligible...more

News from Abroad: Isolated Gene Sequences Suffer A Cruel Fate in the Hands of the High Court of Australia

McDonnell Boehnen Hulbert & Berghoff LLP on 10/8/2015

D'Arcy v Myriad Genetics Inc [2015] HCA 35 - The High Court of Australia has today handed down its decision in D'Arcy v Myriad Genetics Inc [2015] HCA 35, unanimously striking down the validity of the first three claims...more

Strong Support for Sequenom’s Petition for Rehearing En Banc

Patterson Belknap Webb & Tyler LLP on 9/10/2015

In Ariosa Diagnostics Inc. v. Sequenom Inc., 788 F.3d 1371 (Fed. Cir. 2015), a Federal Circuit panel held that Sequenom Inc.’s prenatal diagnosis patent claims patent ineligible subject matter under the two-step test of Mayo...more

Protecting Diagnostic Innovation – Two Actor Infringement Liability

Foley & Lardner LLP on 8/25/2015

In Akamai Techs. Inc. v. Limelight Networks, Inc., (August 13, 2015 Fed. Cir.) an en banc Federal Circuit unanimously held that direct infringement under Section 271(a) can occur...more

Sequenom Seeks Rehearing En Banc

Foley & Lardner LLP on 8/18/2015

Sequenom, Inc. has filed a petition for rehearing en banc of the Federal Circuit decision that held its diagnostic method claims invalid under 35 USC § 101. (You can read my synopsis of that decision here). Stakeholders in...more

Patent-Eligible Subject Matter › Myriad