August 2011

August 23, 2011 8:03 PM | Posted by Pham, Tam Thanh | Permalink
With respect to the Myriad method claims for “comparing” or “analyzing” gene sequences, the lower court had held that such claims were not patent-eligible, because they encompassed abstract mental processes independent of any machine or transformation, as required by the prevailing standard articulated by the Federal Circuit in In re Bilski. 545 F. 3d 943 (Fed. Cir. 2008). That strict requirement regarding “machine-or-transformation” has since been deemed too restrictive by the U.S. Supreme Court in Bilski v. Kappos. 130 S. Ct. 3218 (2010). The presence of a “machine-or-transformation,” however, is still recognized as an important clue regarding patent-eligibility of method claims. read more
August 8, 2011 5:17 PM | Posted by Pham, Tam Thanh | Permalink

On July 29, 2011, the Court of Appeals for the Federal Circuit published its decision in Association for Molecular Pathology v. Myriad Genetics.  The appeal was taken from a controversial Southern District of New York decision, which held that isolated DNA is not patent-eligible subject matter under 35 U.S.C. §101 due to being a product of nature.  In addition, method claims directed to “comparing” or “analyzing” DNA sequences were found to lack subject matter eligibility, because they lacked any tie to a “machine-or-transformation.”

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