Sequenom v. Ariosa and international approaches to the patent eligibility of biomedical innovation

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With a potential petition for writ of certiorari in the Sequenom v. Ariosa case approaching, it appears as if the US Supreme Court  will once again have to consider crucial patent eligibility questions with a great significance for biomedical innovation and diagnostic methods.

The claims at issue (see U.S. Patent No. 6,258,540 ) are directed to methods of genetic testing by detecting and amplifying paternally inherited fetal cell-free DNA (cffDNA) from maternal blood and plasma. Before the development of this non-invasive prenatal diagnostic test, patients were placed at much higher risk and maternal plasma was routinely discarded as waste.

In an earlier decision the district court ruled that the method claims were patent ineligible and an - apparently reluctant  - Federal Circuit agreed in Ariosa Diagnostics, Inc. v. Sequenom, Inc. 788 F.3d 1377 (Fed Cir. 2015). Judge Linn, for example, wrote that the innovation deserves patent protection, but also that the “sweeping language of the test" established in Mayo v. Prometheus requires a determination that the claims are patent ineligible.

Whereas it is clear that the patent eligibility thresholds have been heightened considerably since the U.S. Supreme Court decisions in Mayo, Myriad and Alice, I believe that a more holistic  Diamond v. Diehr -like interpretation of these decisions should be possible and much welcomed.  In my view, the very strict interpretation of these decisions in Ariosa contradicts longstanding decisions by the US Supreme Court and by lower federal courts. Moreover, it not only conflicts with current European approaches, but arguably also with international treaties, which is probably a more important argument for the Supreme Court. If Ariosa prevails, inventors would often have to rely on trade secrets, or other forms of protection and new business models, with a variety of consequences for technology transfer, open innovation and (public-private) collaborations . Hence, crucial issues are at stake, which may have a considerable impact on the development of - and access to - new therapies in increasingly important areas of medicine. From a European perspective, the  dynamics and interplay of specialized jurisdiction with a generalist Supreme Court is also particularly interesting. Hence, this case provides a great forum for discussing challenges, alternatives and opportunities for both the U.S. and the  global innovation system. In a rather recent paper we analyze the post-Myriad developments in the US and compare them to the situation in Europe and Australia. Please find further information below:

Title: Life after Myriad: The Uncertain Future of Patenting Biomedical Innovation & Personalized Medicine in an International Context.

Authors: Robert M. Schwartz & Timo Minssen, Universities of Lund and Copenhagen,

Journal: Intellectual Property Quarterly, Vol. 2015, Nr. 3, 08.2015, pp. 189-241.


In a unanimous judgment the US Supreme Court held in the 2013 Myriad gene patent case that patent claims directed to isolated genomic DNA are identical to the naturally occurring sequence and thus not patent eligible "products of nature". It appears therefore that for a new biological composition of matter to be patent eligible, it must not be identical to the naturally occurring biological composition. This decision affects all isolated "products of nature", including genes, gene fragments, and other naturally occurring nucleotide sequences, as well as naturally occurring amino acid sequences, including peptides, ligands, and proteins. Consequently, Myriad has a severe impact on many patent portfolios. Although Myriad does not directly affect the patentability of cDNA or sufficiently modified compounds, and the most recent USPTO guidance provides some hints on how the new eligibility standard can be met, it is still not entirely clear how much modification is required to render a molecule sufficiently distinct from naturally occurring counterparts. Moreover, when combined with the US Supreme Court decisions in Prometheus and Alice , Myriad may affect method claims which depend upon unmodified biological materials. The USPTO guidance, however, still leaves much uncertainty over the patentability of such methods and diagnostics. The substantial impact of these decisions on the biomedical sector and personalized medicine, as recently demonstrated by the 2015 CAFC decision in Ariosa v. Sequenom, as well the methodology used by the generalist Supreme Court in reversing a specialized CAFC judgment is particularly interesting from a comparative perspective. This paper analyses and discusses these U.S. developments, and compares them with the situation in Australia and in the EU.
Publikationsdato7 mar. 2016
StatusUdgivet - 7 mar. 2016

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Senest ændret: 07/03/2016

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