Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context

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Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context. / M. Schwartz, Robert; Minssen, Timo.

In: Intellectual Property Quarterly, Vol. 2015, No. 3, 08.2015, p. 189-241.

Research output: Contribution to journalJournal articleResearchpeer-review

Harvard

M. Schwartz, R & Minssen, T 2015, 'Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context', Intellectual Property Quarterly, vol. 2015, no. 3, pp. 189-241.

APA

M. Schwartz, R., & Minssen, T. (2015). Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context. Intellectual Property Quarterly, 2015(3), 189-241.

Vancouver

M. Schwartz R, Minssen T. Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context. Intellectual Property Quarterly. 2015 Aug;2015(3):189-241.

Author

M. Schwartz, Robert ; Minssen, Timo. / Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context. In: Intellectual Property Quarterly. 2015 ; Vol. 2015, No. 3. pp. 189-241.

Bibtex

@article{17a346b522c3490f889a3cc0cb15f499,
title = "Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context",
abstract = "On June 13, 2013, the U.S. Supreme Court decided the Myriad gene patent case. In a unanimous judgment the Court held that patent claims directed to isolated genomic DNA are identical to the naturally occurring sequence and thus unpatentable “products of nature”. This decision affects all isolated{"}products of nature{"}, including genes, gene fragments, and other naturally occurring nucleotide sequences, as well as naturally occurring amino acid sequences, including peptides, ligands, and proteins. Consequently, Myriad has a severe impact on many patent portfolios. Although Myriad does not directly affect the patentability of cDNA or sufficiently modified compounds, and the most recent USPTO guidance provides hints on how the new eligibility standard can be met, it is still not entirely clear how much modification is required to render a molecule sufficiently distinct from naturally occurring counterparts. Moreover, when combined with the US Supreme Court decisions in Prometheus and Alice, Myriad may affect method claims which depend upon unmodified biological materials. The USPTO guidance, however, still leaves much uncertainty over the patentability of such methods and diagnostics. The substantial impact of these decisions on the biomedical sector and personalized medicine,as well the methodology used by the generalist Supreme Court in reversing a specialized CAFC judgment is particularly interesting from a comparative perspective. This paper analyses and discusses these U.S. developments, and compares them with the situation in Australia and in the EU.  Keywords: biotechnology, comparative patent law, US, Europe, Australia, DNA, Myriad, patent-eligibility,personalized medicine, genetic diagnostics, USPTO 2014 Guidelines, methods,innovation, Unified Patent Court.",
keywords = "The Faculty of Law, biotechnology, comparative patent law, US, Europe, Australia, DNA, Myriad, patent-eligibility,personalized medicine, genetic diagnostics, USPTO 2014 Guidelines, methods,innovation, Unified Patent Court.",
author = "{M. Schwartz}, Robert and Timo Minssen",
year = "2015",
month = "8",
language = "English",
volume = "2015",
pages = "189--241",
journal = "Intellectual Property Quarterly",
issn = "1364-906X",
publisher = "Sweet & Maxwell Ltd.",
number = "3",

}

RIS

TY - JOUR

T1 - Life after Myriad: the uncertain future of patenting biomedical innovation and personalised medicine in an international context

AU - M. Schwartz, Robert

AU - Minssen, Timo

PY - 2015/8

Y1 - 2015/8

N2 - On June 13, 2013, the U.S. Supreme Court decided the Myriad gene patent case. In a unanimous judgment the Court held that patent claims directed to isolated genomic DNA are identical to the naturally occurring sequence and thus unpatentable “products of nature”. This decision affects all isolated"products of nature", including genes, gene fragments, and other naturally occurring nucleotide sequences, as well as naturally occurring amino acid sequences, including peptides, ligands, and proteins. Consequently, Myriad has a severe impact on many patent portfolios. Although Myriad does not directly affect the patentability of cDNA or sufficiently modified compounds, and the most recent USPTO guidance provides hints on how the new eligibility standard can be met, it is still not entirely clear how much modification is required to render a molecule sufficiently distinct from naturally occurring counterparts. Moreover, when combined with the US Supreme Court decisions in Prometheus and Alice, Myriad may affect method claims which depend upon unmodified biological materials. The USPTO guidance, however, still leaves much uncertainty over the patentability of such methods and diagnostics. The substantial impact of these decisions on the biomedical sector and personalized medicine,as well the methodology used by the generalist Supreme Court in reversing a specialized CAFC judgment is particularly interesting from a comparative perspective. This paper analyses and discusses these U.S. developments, and compares them with the situation in Australia and in the EU.  Keywords: biotechnology, comparative patent law, US, Europe, Australia, DNA, Myriad, patent-eligibility,personalized medicine, genetic diagnostics, USPTO 2014 Guidelines, methods,innovation, Unified Patent Court.

AB - On June 13, 2013, the U.S. Supreme Court decided the Myriad gene patent case. In a unanimous judgment the Court held that patent claims directed to isolated genomic DNA are identical to the naturally occurring sequence and thus unpatentable “products of nature”. This decision affects all isolated"products of nature", including genes, gene fragments, and other naturally occurring nucleotide sequences, as well as naturally occurring amino acid sequences, including peptides, ligands, and proteins. Consequently, Myriad has a severe impact on many patent portfolios. Although Myriad does not directly affect the patentability of cDNA or sufficiently modified compounds, and the most recent USPTO guidance provides hints on how the new eligibility standard can be met, it is still not entirely clear how much modification is required to render a molecule sufficiently distinct from naturally occurring counterparts. Moreover, when combined with the US Supreme Court decisions in Prometheus and Alice, Myriad may affect method claims which depend upon unmodified biological materials. The USPTO guidance, however, still leaves much uncertainty over the patentability of such methods and diagnostics. The substantial impact of these decisions on the biomedical sector and personalized medicine,as well the methodology used by the generalist Supreme Court in reversing a specialized CAFC judgment is particularly interesting from a comparative perspective. This paper analyses and discusses these U.S. developments, and compares them with the situation in Australia and in the EU.  Keywords: biotechnology, comparative patent law, US, Europe, Australia, DNA, Myriad, patent-eligibility,personalized medicine, genetic diagnostics, USPTO 2014 Guidelines, methods,innovation, Unified Patent Court.

KW - The Faculty of Law

KW - biotechnology, comparative patent law, US, Europe, Australia, DNA, Myriad, patent-eligibility,personalized medicine, genetic diagnostics, USPTO 2014 Guidelines, methods,innovation, Unified Patent Court.

UR - http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2621058

M3 - Journal article

VL - 2015

SP - 189

EP - 241

JO - Intellectual Property Quarterly

JF - Intellectual Property Quarterly

SN - 1364-906X

IS - 3

ER -

ID: 136890593