A Fed. Cir. panel of Judges Dyk, Taranto and Hughes affirmed the district court’s invalidation of a Prometheus “add-on” patent (U.S. Pat. No. 6,284,770) to a method to treat a form of irritable bowel syndrome, IBS-D, with alosetron, as obvious in view of prior art related to the symptoms of the condition. The primary alosetron patent (the ‘880 patent) had expired. Although the claim did not recite optimizing the dosage of the drug, it still reminded me of the infamous claim in Mayo v. Prometheus, in that both claims were “regimen” type claims which claimed an improved method of treating a subset of patients. In Mayo, the subset was identified by determining which patients were receiving too much drug (= side effects) and which patients were receiving too little ( = not helped) – the subset was the group of patients who were (or could be) treated with the optimal amount of the drug, which was recited in the claim.
Posts Tagged ‘Myriad’
Coming soon after the High Court’s “Myriad decision” in Australia, the Australian Patent Office has proposed guidelines that would effectively limit the ban on patent-eligibility of DNA sequences to nucleic acids that code for polypeptides. While cDNA is still considered to be banned along with naturally-occurring RNA, man-made constructs such as iRNA, primers and probes are patent-eligible, even if their sequences occur naturally.
The Guidelines go even further in addressing some of the “Bergy issues” on the patent-eligibility of “natural products” in proposing that both microorganisms such as viruses and bacteria, as well as proteins, antibodies and small molecules isolated from natural sources will be patentable subject matter.
The USPTO could have taken a similar tack, particularly in view of the Supreme Court’s language in Myriad: “We merely hold that genes and the information they encode are not patent eligible under s.101 simply because they have been isolated from the surrounding genetic material.” Instead, the Office issued Guidelines that, in effect, banned patenting any substance or even specifically formulated mixtures of substances that were “isolated from the surrounding [jungle of nature]”. Myriad was not the appropriate decision for the USPTO to repudiate any reliance on In re Bergy particularly in view of the dicta in the Fed. Cir. Myriad opinions that stated that Bergy was not applicable. There is an urgent need for the Fed. Cir. to reaffirm or repudiate Bergy (as well as to clearly state that methods of medical treatment or “medical procedures” are still patent eligible, if they are.)
You can read the article from Fisher Adams Kelly here.
In 2011—after the Fed. Cir. decision in Myriad upholding claims to BRACA1 and 2 genes—the PTO was tasked by a section of the AIA with providing Congress with a report on the effect of patenting on confirmatory genetic testing. The report has finally been released and, predictably, has little in the way of solid conclusions – especially since hard data in this area has always been wanting. (A copy of the report is available at the end of this post.) For example, addressing the question about the effect of access to confirmatory genetic testing on the quality of medical care, the report “concluded”: “Where evidence was available, it was often not of the magnitude, quality or rigor that scientists generally consider reliable in drawing conclusions.” The report estimated that only 1-5% of patients who were genetically tested, e.g., for mutations relating to a predisposition of a pathology, needed further testing.
Significant to the IP community, the report stated that the decisions in Myriad and Mayo invalidating many of the claims of the patents that were on appeal four years ago, has “dramatically changed” the “patent landscape” and cleared “some hurdles” that may have prevented patients from getting confirmatory genetic diagnostic testing. Of course, post Myriad, the PTO and, more ambiguously, the Fed. Cir. have taken the position that most diagnostic claims are not patent eligible. That removes a lot of “hurdles” for any organization that wants to copy a diagnostic test that is, or could have been, patented not so long ago.
In re Roslin Institute, a Fed. Cir. panel consisting of Judges Dyk, Moore and Wallach ruled that clones including Dolly the sheep were not patent eligible. Judge Dyk, writing for the panel endorsed the “markedly different” structure requirement for patent eligibility that the PTO had proposed abandoning in December 2004:
“[According to Chakrabarty], discoveries that possess ‘markedly different characteristics from any found in nature,’ are eligible for patent protection. In contrast, any existing organism or new discovered plant found in the wild is not patentable.”
In Ariosa, Judges Renya, Linn and Wallach turned a method of isolation of cffDNA into a “natural product”:
“The method therefore begins and ends with a natural phenomenon. Thus the claims are directed to matter that is naturally occurring….Because the claims at issue are directed to naturally occurring phenomena, …the practice of the method claims does not result in an inventive concept that transforms the natural phenomenon of cffDNA into a patentable invention.”