As biotech gains momentum in the advancement of personalized medicine and diagnostic therapies, an upcoming decision by the Federal Circuit in Association for Molecular Pathology, et al. v. U.S. Patent and Trademark Office, et al., may help decide the fate of DNA patenting in the United States. This “gene patenting” case could potentially impact future genetic research and development and how innovation is funded, thereby creating a perfect storm in a potentially defining moment in biotechnology.
On Tuesday, January 11, 2011 Foley presented a roundtable Web conference featuring a lively panel of industry and academic thought leaders from all sides of the patent-eligibility issue, providing an advanced look as to likely outcomes and implications of what the Federal Circuit may decide. Issues to be discussed include:
- Is DNA a 35 U.S.C. § 101 “composition of matter”? What exactly is a “gene patent,” and what does it mean to assert that such technology is patent-ineligible? Are other statutory requirements (such as non-obviousness) more appropriate gatekeepers for obtaining patents directed to this subject matter?
- Splitting the Baby – DOJ vs. USPTO: Does the Justice Department’s distinction supporting patent-eligibility of some DNA compositions, but not isolated “product-of-nature” DNA, make legal and scientific sense? What practical implications would a decision based on the DOJ distinction have for the biotech industry? What alternate claim forms will be open?
- Would an anti-eligibility ruling violate the Trade-Related Aspects of Intellectual Property Rights (TRIPS)?
- Will the Federal Circuit dismiss the case for lack of jurisdiction under Medimmune v. Genentech?
Moderated by: Harold C. Wegner, Partner, Foley & Lardner LLP
Panelists
Kevin Noonan, Ph.D., Partner, McDonnell Boehnen Hulbert & Berghoff LLP and founding author of the Patent Docs weblog
Joshua D. Sarnoff, Associate Professor, DePaul University College of Law
Hans Sauer, Ph.D., Associate General Counsel for Intellectual Property, Biotechnology Industry Organization (BIO)
Jacqueline D. Wright Bonilla, Ph.D., Partner, Foley & Lardner LLP
For more information, please contact Meg Ryan at mryan@foley.com.
