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.