ABSTRACT
Court’s recent decision in Association for Molecular Pathology v. Myriad Genetics, Inc. In this case, the Supreme Court held that “isolated” segments of naturally occurring DNA cannot be patented. Prior to this decision, nanotechnology experts feared that a broad ban on “isolated” DNA segments might spill over to other fields and prevent nanotech companies from obtaining patents on certain types of nanomaterials. But, the Supreme Court issued a balanced decision upholding Myriad’s patents on synthetically created complementary DNA and spoke approvingly of methods of isolating DNA and using DNA for new applications. The decision therefore holds the door open to the commercially most important areas of nanotech patenting. The chapter’s authors (who represented the nanotech industry in an amicus brief filed in the Myriad case) propose strategies for patenting nanotech inventions in the wake of the Myriad decision. 6.2 Background on Patent Eligibility
An invention is eligible for a patent if it satisfies 35 USC §101 of the Patent Act, which reads [1]:
At the same time, the Supreme Court has maintained that “laws of nature, natural phenomena, and abstract ideas” are not patent eligible [2]. For this reason, the Supreme Court has said that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E = mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of … nature, free to all men and reserved exclusively to none’” [3]. Whether a chemical, such as DNA, can be patented, therefore, comes down to a question of whether it claims a “new and useful … composition of matter” (patent eligible under §101), or instead claims a product of nature (not patent eligible).
