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In a unanimous opinion issued on June 13, 2013, the U.S. Supreme Court distinguished between isolated naturally-occurring DNA, which is non-patentable, and a synthetic version of DNA, complementary cDNA, which is patentable. Association for Molecular Pathology v. Myriad Genetics.

In this case, Myriad owned several key patents that gave it the exclusive right to isolate the BRCA1 and BRCA2 genes on human chromosomes for genetic testing. Through isolating these genes, Myriad was also able to change the genetic sequence, resulting in cDNA, a non-naturally occurring DNA sequence.

Applying 35 U.S.C. §101, the Court held that the isolated DNA was not patentable. The mere act of separating a gene from its surrounding genetic material is not an act of invention and, therefore, is not patentable. The Court reached a different result for cDNA, holding that since researchers create something new from the original DNA when cDNA is produced, cDNA is not a product of nature and is therefore patentable.

This decision will have a significant impact on DNA testing laboratories, genomics companies and research institutions. The compromise reached by the decision allows opportunity for researchers to develop technology utilizing the isolated DNA sequence as it is not patent protected. Conversely, patent protection still exists for synthetic DNA (such as cDNA) and the processes used to carry out related tests, such as cancer screenings. This protection affords the biotechnology industry and equity investors incentive to invest research in this field.

For more information, please contact:

Richard S. Cooper

David B. Cupar

Jane Pine Wood

Emily E. Vlasek

It is critical in today's technology-driven, global marketplace to effectively procure and manage intellectual property. Our clients rely on us to provide prompt, thorough and efficient counsel on matters involving patents, copyrights, trademarks, trade dress, trade secrets, intellectual property procurement, and enforcement. We focus on management and enforcement for Fortune 500 companies, mid-cap companies and start-ups. Supported by the talents of our litigation and business law attorneys, our IP attorneys deliver a complete range of innovative and comprehensive solutions, as well as insightful industry expertise. Our in-depth approach enables us to meet the business goals of our diverse client base. In fact, the hallmark of our IP practice is to dovetail our clients’ intellectual property needs with their business plans and strategies, presenting a cohesive and thorough outcome.