Patent Claims To Products Found In Nature or Such Products Chemically Modified Via Their Isolation Struck Down
In a sweeping, unanimous decision today the US Supreme Court struck down patent claims to isolated DNAs. The decision also extends to DNAs, or any other material, that are obtained from nature but are also chemically modified (e.g., chemical bonds were broken in order to obtain the material). According to the Court, "Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13", not successfully obtaining the gene itself. And central to the Court's logic was the precedential decision Chakrabarty, which the Court said was "central to this inquiry." According to the Court, the facts in Chakrabarty were very different from the facts at issue in Myriad, because in Chakrabarty the "scientists added four plasmids to a bacte¬rium" where here the chemical modifications to the DNAs claimed by Myriad were insubstantial - "Myriad did not create anything." Making new law, the Court opined that what is now required for patent eligibility is "an act of invention", which is not defined in the opinion. The decision does not discuss how courts should determine if a chemical modification is substantial enough to impart patent eligibility (the modification amounts to more than breaking covalent bonds but not the substitution of a nucleotide in a polynucleotide, which, according to the Court may be sufficient). The decision is available here.