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Standing on shaky ground: US patent-eligibility of isolated DNA and genetic diagnostics after AMP v USPTO - Part IV

Minssen, Timo and Schwartz, Robert LU (2013) In Queen Mary Journal of Intellectual Property 3(2). p.118-144
Abstract
As discussed in the previous issues of QMJIP, the Federal Circuit's decisions in Myriad I-2 and II3 appear to provide considerable prospects for patentees, as clever claim drafting may still help to avoid most patent-eligibility traps set by the much debated US Supreme Court decision in Prometheus.(4) Yet, the split opinions also contain elusive reasoning by each of the three judges. The questions left open by Prometheus and the remaining split at the Federal Circuit with regard to inter alia DNA-related product claims provide excellent fodder for another US Supreme Court review with potentially broad implications for biotech patents. Acknowledging the criticism of excessively broad upstream patent claims and referring briefly to... (More)
As discussed in the previous issues of QMJIP, the Federal Circuit's decisions in Myriad I-2 and II3 appear to provide considerable prospects for patentees, as clever claim drafting may still help to avoid most patent-eligibility traps set by the much debated US Supreme Court decision in Prometheus.(4) Yet, the split opinions also contain elusive reasoning by each of the three judges. The questions left open by Prometheus and the remaining split at the Federal Circuit with regard to inter alia DNA-related product claims provide excellent fodder for another US Supreme Court review with potentially broad implications for biotech patents. Acknowledging the criticism of excessively broad upstream patent claims and referring briefly to corresponding European debates, Part IV of this series finally discusses the recent developments from a broader innovation-policy perspective. Highlighting the mitigating effects of additional factors, such as higher thresholds for other patentability criteria, scientific advances, post-grant mechanisms and the dynamic qualities of biomedical innovation, the authors note that overly static eligibility doctrines entail considerable risks for technological progress. While it is essential that the Supreme Court further clarifies its principles, the authors urge it not to categorically close the 'patent-eligibility door' to important emerging technologies. (Less)
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author
organization
publishing date
type
Contribution to journal
publication status
published
subject
keywords
biotechnology, US, DNA, Myriad, patent-eligibility, personalized, medicine, genetic diagnostics
in
Queen Mary Journal of Intellectual Property
volume
3
issue
2
pages
118 - 144
publisher
Edward Elgar Publishing
external identifiers
  • wos:000329412700003
  • scopus:84905924207
ISSN
2045-9807
DOI
10.4337/qmjip.2013.02.02
language
English
LU publication?
yes
id
7459ec91-dc8c-4ece-8d08-7887745810e9 (old id 4330120)
date added to LUP
2014-02-26 11:45:17
date last changed
2019-10-01 02:02:24
@article{7459ec91-dc8c-4ece-8d08-7887745810e9,
  abstract     = {As discussed in the previous issues of QMJIP, the Federal Circuit's decisions in Myriad I-2 and II3 appear to provide considerable prospects for patentees, as clever claim drafting may still help to avoid most patent-eligibility traps set by the much debated US Supreme Court decision in Prometheus.(4) Yet, the split opinions also contain elusive reasoning by each of the three judges. The questions left open by Prometheus and the remaining split at the Federal Circuit with regard to inter alia DNA-related product claims provide excellent fodder for another US Supreme Court review with potentially broad implications for biotech patents. Acknowledging the criticism of excessively broad upstream patent claims and referring briefly to corresponding European debates, Part IV of this series finally discusses the recent developments from a broader innovation-policy perspective. Highlighting the mitigating effects of additional factors, such as higher thresholds for other patentability criteria, scientific advances, post-grant mechanisms and the dynamic qualities of biomedical innovation, the authors note that overly static eligibility doctrines entail considerable risks for technological progress. While it is essential that the Supreme Court further clarifies its principles, the authors urge it not to categorically close the 'patent-eligibility door' to important emerging technologies.},
  author       = {Minssen, Timo and Schwartz, Robert},
  issn         = {2045-9807},
  keyword      = {biotechnology,US,DNA,Myriad,patent-eligibility,personalized,medicine,genetic diagnostics},
  language     = {eng},
  number       = {2},
  pages        = {118--144},
  publisher    = {Edward Elgar Publishing},
  series       = {Queen Mary Journal of Intellectual Property},
  title        = {Standing on shaky ground: US patent-eligibility of isolated DNA and genetic diagnostics after AMP v USPTO - Part IV},
  url          = {http://dx.doi.org/10.4337/qmjip.2013.02.02},
  volume       = {3},
  year         = {2013},
}