4/25/2010

In Association For Molecular Pathology v. U.S.P.T.O and Myriad Genetics[1], a decision rendered by the U.S. District Court for the U.S. District Court for the Southern District of New York on March 29, 2010, isolated DNA containing naturally-occurring human BRCA1/2 gene sequences linked to breast and ovarian cancer were not “markedly different” from native DNA as it exists in nature and hence constitute unpatentable subject matter under 35 U.S.C. §101.  For an analysis of Association For Molecular Pathology see the April 2010 Juhasz Burge PC Advisory .

Understanding how to claim a composition or process narrowly enough to encompass only a particular application of a fundamental principle rather than pre-empting the principle itself, is easier said than done.  There needs to be meaningful specific “machine” or “transformation of an article” limits on the claim’s scope to impart patent-eligibility.  In addition, the “machine” or “transformation” must be central to the purpose of the claimed process; not merely be insignificant extra-solution activity. This exercise is very case specific and fact intensive.

That is why the more you can do to understand this evolving body of law and the factors important to lending patentability to a composition or process claim, the more, if you are a patent holder, steps you can take to ensure your claims meet the statutory patentability standard, or, if you are dealing with a third party patent, confidence you can have that the third party patent claims constitute or do not constitute statutory subject matter.  The Juhasz Burge PC Firm can help you to better understand the effect of this body of law on your claims, including, if you are a patent holder, helping you craft claims to better weather a 35 U.S.C. §101 statutory challenge, or, if you are dealing with a third party patent, providing you with strategic counseling to help you understand whether asserted claims likely meet or fail to satisfy the statutory subject matter standard.

Your patents may be your most important asset.  To help you protect your patents we hope you think of Juhasz Burge PC, the firm committed to Positioning Your Patent Beyond The Horizon℠.

Posted by Paul R. Juhasz, President

[1] Association For Molecular Pathology v. U.S.P.T.O and Myriad Genetics, Case 1:09-cv-04515-RWS, filed March 29, 2010 (.D.C. S.D.N.Y. 2010).