Patenting DNA Sequences After the Myriad Decision: New Frontiers or Just More of the Same?

Abstract

The recent United States Supreme Court decision in Association for Molecular Pathology v Myriad Genetics Inc determined that a naturally occurring DNA sequence is not patentable. This is a significant finding by a superior United States court after more than 20 years of contentious debate about the merits of patenting DNA. This article reviews the decision and considers its likely effects on existing and future claims over DNA sequences. The article concludes that even though the decision might be heralded as a significant limitation on DNA patenting, in fact, probably very little has changed and DNA remains eminently patentable. The decision is really a triumph of form over substance. Introduction Ever since the United States Supreme Court decision in Diamond v Chakrabarty stating “anything under the sun that is made by man”, 1 and establishing that living human-made biological organisms were patentable subject matter under the United States Patent Act, the reach of patents over biological materials has been complicated and contested. 2 This is partly a consequence of the broad language of the patent * Associate Professor, Australian Centre for Intellectual Property in Agriculture, Griffith Law School, Griffith University, Queensland. This project has been generously supported by the Australian Research Council (DP120101434). 1 Noting, of course, that this is a misleading quotation from the legislative history of the Patent Act the full quote being: “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun made by man, but it is not necessarily patentable under § 101 unless the conditions of the title are fulfilled”: S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No.1923, 82d Cong., 2d Sess. 6 (1952). 2 Diamond v Chakrabarty, 447 U.S. 303, 309 (1980); 35 U.S.C. §101. For an overview of the significance of this case see Douglas Robinson and Nina Medlock, “Diamond v Chakrabarty: A Retrospective on 25 Years of Biotech Patents” (2005) 17 Intellectual Property & Technology Law Journal 12.