Supreme Court Holds Isolated Naturally Occurring DNA Cannot Be Patented, Sustains Patent-Eligibility of cDNA

13 June 2013 Publication
Author(s): Antoinette F. Konski Courtenay C. Brinckerhoff Kristel Schorr

Legal News: Intellectual Property

On June 13, 2013, the U.S. Supreme Court issued its long-awaited decision in the “ACLU/Myriad” gene patenting case (formally, Association For Molecular Pathology. et al. v. Myriad Genetics, Inc., et al., Supreme Court No. 12-398). In a unanimous opinion authored by Justice Thomas, the Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.”

While the Court’s decision is not unexpected, it marks a significant change in the law, and reverses the decades-old USPTO practice of granting patents on naturally occurring substances as long as they are “isolated” from nature. Thus, this decision could undermine the validity of granted patents and make it more difficult to obtain patents protecting newly isolated products of nature. On the other hand, the Court suggests that innovators could obtain patents on methods related to new genetic discoveries, including “innovative methods of manipulating genes” and “new applications of knowledge” obtained from them. 


This case stems from a declaratory judgment action brought to challenge certain claims in seven Myriad patents related to its discovery of the BRCA1 and BRCA2 genes, and the correlation between specific mutations in those genes and a heightened risk of developing certain breast and ovarian cancers. In 2010, Judge Sweet of the U.S. District Court for the Southern District of New York invalidated the challenged claims as not patent-eligible under 35 USC § 101. Myriad appealed to the U.S. Court of Appeals for the Federal Circuit, which reversed in a divided decision issued July 29, 2011. (See Foley’s July 29, 2011 Legal News Alert.) After the Supreme Court issued its decision in Mayo v. Prometheus (see Foley’s March 20, 2012 Legal News Alert), it granted certiorari, vacated the July 29, 2011 Federal Circuit Myriad decision, and remanded the case to the Federal Circuit for reconsideration in view of Mayo. The Federal Circuit issued its remand decision on August 16, 2012, essentially reiterating its first decision. (See Foley’s July 29, 2011 Legal News Alert.) The Supreme Court granted certiorari and heard oral arguments on April 15, 2013.

The Supreme Court Decision

The Supreme Court granted certiorari to answer the question, “Are human genes patentable?” The decision focuses on the “product of nature” exception to 35 USC § 101, and cites its 2012 decision in Mayo v. Prometheus for its discussion of the “considerable danger that the grant of patents [on laws of nature and natural phenomena] would ‘tie up’ the use of such [basic] tools [of scientific and technological work] and thereby ‘inhibit future innovation premised upon them.’” 

Isolated Naturally-Occurring DNA Is Not Patent-Eligible

The Court framed the primary issue before it as whether “uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13 … renders the genes patentable.” Throughout its analysis, the Court emphasized that Myriad “did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes.” Considering the claimed subject matter in view of two earlier Supreme Court cases, Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980), and Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948), the Court found it to be more akin to that of Funk Brothers, where a composition of a combination of known microorganisms was held not patentable, than Chakrabarty, where a genetically modified microorganism was held patent-eligible. While Chakrabarty’s claims were patent-eligible because “[t]he Chakrabarty bacterium was new ‘with markedly different characteristics from any found in nature,’” the Court here found that “Myriad did not create anything.”

To be sure, [Myriad] found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.

The Court emphasized that “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry,” nor does “extensive effort.” Rather, the Court seemed to require, as a condition of patent-eligibility, a new composition of matter that does not have a corollary in nature.

Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes "new ... compositions of matter," § 101, that are patent eligible. 

In his decision for the Federal Circuit upholding the validity of these claims, Judge Lourie reasoned that “isolated” DNA is not a product of nature, because “[i]solated DNA has been cleaved (i.e., had covalent bonds in its backbone chemically severed) or synthesized to consist of just a fraction of a naturally occurring DNA molecule.” The Supreme Court did not find this difference to be relevant, stating, “Myriad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA.” Rather, as the ACLU had emphasized, “the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes.” 

cDNA Is Patent Eligible

The Supreme Court held that cDNA is patent eligible, because cDNA is “an exons-only molecule that is not naturally occurring.” (That is, cDNA does not include the regions of non-coding DNA that are present in naturally occurring DNA.) The Court was not persuaded by petitioners’ arguments that cDNA should not be patent eligible because “[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician,” noting that “the lab technician unquestionably creates something new when cDNA is made.”

Fragments Indistinguishable From Naturally Occurring DNA Are Not Patent Eligible

Notwithstanding its holding that cDNA is patent eligible, the Court cautioned that fragments of cDNA that are “indistinguishable from natural DNA” are not. Thus, claim 6 of Myriad’s U.S. Patent 5,747,282, which recites “[a]n isolated DNA having at least 15 nucleotides” of its cDNA sequence would be invalid if there is any 15-nucleotide span of cDNA that is indistinguishable from the naturally occurring sequence. 

Method Claims Not at Issue 

The Supreme Court makes clear that its decision does not implicate the patent-eligibility of any type of method claims. The opinion expressly notes that Myriad could have sought to patent any “innovative method of manipulating genes” that it invented while searching for the BRCA1 and BRCA2 genes. The Court also points out that “this case does not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes,” such as new diagnostic methods. Of course, the patent-eligibility of such methods would have to be assessed in view of Mayo v. Prometheus, but it is noteworthy that the Court points out this option. 

The Court also stated that it was not deciding “the patentability of DNA in which the order of the naturally occurring nucleotides has been altered,” because “[s]cientific alteration of the genetic code presents a different inquiry, and we express no opinion about the application of §101 to such endeavors.” 

Thus, the Court concluded: 

We merely hold that genes and the information they encode are not patent eligible under §101 simply because they have been isolated from the surrounding genetic material.

Looking Ahead

This decision will be of great interest to the biotech and life sciences community and to those generally following patent jurisprudence relating to what subject matter is eligible for patent protection under §101. 

Patent Nation Web Conference

On June 26, 2013, as part of our Patent Nation Web Conference series, Foley is pleased to host a distinguished panel of speakers to discuss the intricacies and likely impact of the Myriad decision. Our panelists, the Honorable Paul R. Michel (ret.), United States Court of Appeals for the Federal Circuit, Hans Sauer, Ph.D., Associate General Counsel for Intellectual Property, Biotechnology Industry Organization, and Kevin Noonan, Ph.D., Partner, McDonnell Boehnen Hulbert & Berghoff LLP, and co-founder, Patent Docs, and moderator Courtenay C. Brinckerhoff, Partner, Foley & Lardner LLP, will analyze the decision and discuss what it means for the life sciences industry and the evolving area of patent-eligibility jurisprudence as a whole. Register today.

For further conversations on this topic, please visit us online at Foley’s PharmaPatents Blog or Foley’s Personalized Medicine Bulletin.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:

Courtenay C. Brinckerhoff
Washington, D.C.

Antoinette F. Konski
Palo Alto, California

Kristel Schorr
Washington, D.C