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New USPTO Patent Subject Matter Eligibility Guidelines Raise More Questions Than They Answer

The USPTO has issued new Guidance For Determining Subject Matter Eligibility to help examiners apply the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” The guidelines focus on a “signficantly different” test, and include lists of factors that weigh towards and against patent eligibility. The guidelines also include several examples applying the new analytical framework to sample claims. The guidelines do not apply to claims that raise “abstract idea” issues, which are still to be examined under MPEP 2106(II).

This article delves into the details of the guidelines, and you can read a [...]

U.S. Supreme Court Holds Isolated Human Genes May Not Be Patented

On June 13, 2013, the U.S. Supreme Court issued its long-awaited decision in the “ACLU/Myriad” gene patents case (Association For Molecular Pathology v. Myriad Genetics, Inc.). In a unanimous opinion authored by Justice Thomas, the Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.” Thus, the Court held that human genes may not be patented.


This case stems from a declaratory judgment action brought to challenge certain claims in seven patents related to Myriad’s discovery of the BRCA1 and BRCA2 genes, and t [...]

Legro Gartneri A/S v. Svegro AB, Stockholms tingsrätt (Stockholm District Court), 26 April 2012

The Stockholm District Court held the Swedish part of a European patent concerning a method of growing two or more plants invalid, due to lack of inventive step. Despite requests for limitations by the proprietor the patent was declared invalid in its entirety. Infringement, exceptions to patentability and prior use rights were also considered by the Court.

A summary of this case will be posted on

Divided Federal Circuit Decision Holds Claims Invalid In CLS Bank v. Alice Corporation

In a divided en banc decision, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s holding that the claims at issue in CLS Bank v. Alice Corporation are invalid under the “abstract idea” exception to 35 USC § 101. While a majority of the judges agreed that the method and computer-readable medium claims are invalid, they disagreed as to why. Further, the court was evenly split as to whether the systems claims are invalid. (With no majority agreement on that issue, the district court decision is affirmed). Even if this case makes its way to the U.S. Supreme Court, patent-eligibility will remain a murky area of U.S. patent law for the foreseeable future.

U.S. Supreme Court Hears Oral Arguments in Myriad Gene Patent Case

On April 15, 2013, the U.S. Supreme Court will hear oral arguments in one of the most controversial and publicized biotech patent cases, the “ACLU/Myriad” gene patenting case (formally, The Association For Molecular Pathology, et al. v. USPTO et al.). While it is nearly impossible to predict the outcome of a Supreme Court case from the oral arguments, the questions the Justices ask (or don’t ask) and the parties’ responses may at least provide an indication of the issues that the Court will focus on when it renders its decision.

Are Human Genes Patentable?

The Supreme Court granted certiorari to address the fundamental, threshold question of the patent-eligibility of human g [...]

German Federal Supreme Court rules on the patentability of neural precursor cells

by Miriam Büttner

On 27 November 2012 the German Federal Supreme Court (BGH) decided on the ethical problematical question, if neural precursor cells which origin from human stem cells are patentable or not (case no. X ZR 58/07).

Background of the decision:

Subject of this BGH decision is the validity of German patent no. 197 56 864, which Oliver Brüstle, a German scientist, applied for in 1997 and which was granted by the German Patent and Trademark Office (DPMA) in April 1999. This patent concerns the protection of neural precursor cells, a procedure to cultivate these cells and the usage of these cells in therapies for neural defects of humans and animals. According to the explanation i [...]

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