Navigating the Isolated DNA Patent Eligibility Jungle
Introduction
For over 150 years the Supreme Court has provided three categories of exceptions to patent eligibility under 35 U.S.C §101: abstract ideas, laws of nature, and physical phenomena, since these are the basic tools of scientific and technological work.[1] The Roberts Court has revised the standard for review of “abstract ideas” and “laws of nature” in Bilski v. Kappos and Mayo v. Prometheus, respectively. The Court’s much awaited decision in AMP v. Myriad addressed the “physical phenomena” exception with respect to patents claiming isolated DNA.[2]
The recent decision in Myriad will have an impact reaching far beyond the patentability of isolated DNA. Patent eligibility for isolated DNA is crucial for the continued growth of the biotechnology and diagnostics industries. The decision, disallowing patenting of isolated DNA, will have a chilling effect on these industries. Furthermore, the decision casts a cloud on … Read More »
What Goes Up…Must Come Down: Viagra patent invalidated by Canadian Supreme Court
Pfizer and Teva have been fighting a legal battle over Pfizer’s patent for Viagra in Canada. The first shot was fired when Novopharm Limited, now Teva Pharmaceutical Industries, applied for a notice of compliance in order to produce a generic version of Viagra in Canada. Teva alleged that Pfizer’s Canadian Patent 2,163,446 was invalid for obviousness, lack of utility and insufficient disclosure. The lower Federal Court held that the patent was valid because the invention was not obvious. The lower court also concluded that the invention was useful, and that the patent did not fail to adequately disclose it. The lower court prohibited the issuance of the notice of compliance.
Teva dropped its allegations of obviousness, and appealed to the Supreme Court of Canada. In a decision published on November 8, 2012, the Supreme Court held 7-0 that the patent was … Read More »
Patent War Between St. Jude Medical and Volcano Has Mixed Results
St. Jude Medical and Volcano have been embroiled in a legal battle over patents held by both companies, related to pressure wire technology that is used for heart patients. The battle began over two years ago when St. Jude Medical sued Volcano, in Delaware district court, for infringement of 5 of its patents for pressure guide wire products. The patents in suit were U. S. Patent No. 5,938,624, U.S. Patent No. 6,196,980, U.S. Patent No. 6,112,598, U.S. Patent No. 6,167,763 and U.S. Patent No. 6,248,083. St. Jude requested an injunction and damages for infringement of the five asserted patents.
Volcano replied by counterclaiming, alleging that St. Jude Medical had infringed four of its own patents, but later dropped one of those patents from the suit. The three remaining patents asserted by Volcano against St. Jude were U.S. Patent No. 6,976,965, U.S. … Read More »