US COURTS GRAPPLE WITH PATENT-ELIGIBLE SUBJECT MATTER

Patent-eligible subject matter was at issue in the Supreme Court ruling in Mayo v. Prometheusand the Federal Circuit's decision in AMP v. USPTO ("Myriad"). This article, published in the December 2012 issue of WIPO Magazine, discusses the Courts' approach as to which pharmaceutical and biotechnology inventions are considered as patent-eligible subject matter. As of now, the composition of matter claims drawn to isolated DNA molecules and screening methods involving the use of transformed cells containing the isolated DNA molecules are patent-eligible subject matter, whereas method claims for analyzing and comparing DNA sequences are not patent-eligible subject matter. TheMayo decision and the Myriad decision provide a glimpse of the evolving legal standard for patent-eligibility in the pharmaceutical and biotechnology fields.