Categories: Court Info

Myriad Genetics: The US Law on Human Gene Patenting

Discover the pivotal US Supreme Court decision on gene patents, Association for Molecular Pathology v. Myriad Genetics, Inc., and understand the difference between patent-eligible synthetic DNA (cDNA) and unpatentable natural DNA segments. This guide is essential for researchers, biotechnology professionals, and anyone interested in intellectual property law’s impact on genetic science.

For decades, the intersection of biotechnology and intellectual property law was a hotly contested battleground, particularly over the patentability of human genes. The possibility of owning exclusive rights to naturally occurring segments of DNA, like those linked to hereditary diseases, raised profound ethical and practical questions about research, innovation, and healthcare access. This complex legal landscape was fundamentally reshaped by a landmark 2013 decision from the US Supreme Court.

Understanding the current state of gene patents requires delving into the case of Association for Molecular Pathology v. Myriad Genetics, Inc. This ruling drew a critical line, clarifying what constitutes a “product of nature” versus a human “invention” under US patent law, specifically 35 U.S.C. §101.

The Legal History of Gene Patents: Before Myriad

Before the 2013 decision, thousands of patents had been granted in the US claiming rights over human gene sequences and their uses. The rationale was that isolating and purifying a gene sequence from the surrounding genetic material differentiated the isolated gene from its natural occurrence, thus making it patentable as a “composition of matter”.

Case Example: Myriad Genetics’ Monopoly

Myriad Genetics obtained patents on the BRCA1 and BRCA2 genes, mutations of which are strongly associated with increased risks of breast and ovarian cancer. These patents granted the company an effective monopoly over diagnostic testing for these mutations, leading to concerns about high costs, limited patient access, and stifled scientific research. The company made billions of dollars from this exclusive right before the Supreme Court’s ruling.

The Pivotal 2013 Supreme Court Ruling

On June 13, 2013, the US Supreme Court issued a unanimous ruling that forever changed the landscape of gene patenting. The case, Association for Molecular Pathology v. Myriad Genetics, Inc., challenged the validity of Myriad’s patents on the BRCA genes.

Isolated Genes Are Products of Nature

The Court held that a naturally occurring DNA segment is a “product of nature” and therefore not eligible for patenting merely because it has been isolated from its surrounding material. Justice Clarence Thomas, writing for the Court, stated that Myriad “did not create anything” and that separating a gene from its surrounding material is “not an act of invention”. This decision effectively invalidated over 4,300 existing gene patents.

Caution: The Product of Nature Exception

Under US Patent Act §101, patentable subject matter includes any “new and useful process, machine, manufacture, or composition of matter.” However, the Supreme Court maintains an important implicit exception: “Laws of nature, natural phenomena, and abstract ideas” lie beyond patent protection because they are considered “basic tools of scientific and technological work, free to all men and reserved exclusively to none”.

The Key Distinction: DNA vs. cDNA

While the ruling struck down patents on isolated natural DNA, it created a crucial distinction regarding synthetically created genetic material.

Genetic Material	Patent Eligibility (Post-Myriad)	Reasoning
Isolated Genomic DNA (gDNA)	NOT Patent Eligible	It is a “product of nature,” even when isolated, as its sequence is determined by nature.
Complementary DNA (cDNA)	Patent Eligible	It is synthetically created in the laboratory by removing non-coding regions (introns), making it a composition “not naturally occurring”.

Tip from an Intellectual Property Expert

For the biotechnology sector, the focus for patent protection shifted from claiming the isolated gene sequence itself to patenting novel methods, applications, or synthetic compositions. This includes cDNA, new therapeutic methods using the gene, and genetically modified organisms that are “markedly different” from anything found in nature.

The Impact on Genetic Research and Healthcare

The Myriad decision is widely viewed as a major victory for patients and the medical community.

Increased Competition: By invalidating the BRCA gene patents, the ruling opened the market for competition, leading to significantly lower costs for genetic testing (e.g., BRCA testing is now substantially cheaper) and increased accessibility.
Research Freedom: Researchers are now free to study naturally occurring genes and mutations without the threat of patent infringement, facilitating greater data sharing and innovation in diagnostics and therapeutics.
Ongoing Debate: Despite the clarity on natural DNA, the legal debate continues, with legislative attempts periodically introduced to revise US Patent Act Section 101, which critics argue could potentially overturn the Myriad ruling and allow for the patenting of products of nature once again.

Summary: Key Takeaways on Gene Patents

No Patent on Natural DNA: Naturally occurring segments of DNA, even when isolated from the human body, are not patent-eligible because they are “products of nature” (Myriad Genetics 2013).
cDNA is Patentable: Synthetic DNA, known as complementary DNA (cDNA), is patent-eligible because it is created in a lab and does not naturally occur in the human body in that form.
Innovation Focus Shifts: Patent protection in biotechnology now focuses on methods of use, new applications, diagnostic processes, or genetically engineered compositions that demonstrate “markedly different characteristics” from nature.
Access and Cost: The ruling broke genetic testing monopolies, leading to lower costs and greater patient access to crucial health information.

Your Gene Patent Checklist

✓ Isolated natural DNA? No Patent.

✓ Synthetic cDNA (Introns removed)? Patent Eligible.

✓ Diagnostic method using a natural law? Likely No Patent.

✓ New application of a known gene? Patent Eligible (Focus on method).

Frequently Asked Questions (FAQ)

Q: What specific part of the law prohibits patenting natural genes?

A: The US Supreme Court interpreted 35 U.S.C. §101 of the Patent Act, stating that its scope is implicitly limited by the “laws of nature, natural phenomena, and abstract ideas” exception. Genes fall under the “products of nature” exception.

Q: Did the Myriad decision invalidate all genetic patents?

A: No. The ruling only invalidated patents claiming isolated, naturally occurring DNA sequences. Patents on synthetic cDNA and novel methods or applications using gene information remain potentially valid, provided they meet all other patentability requirements (novelty, non-obviousness, etc.).

Q: What is the difference between DNA and cDNA in patent law?

A: DNA (genomic DNA) exists naturally and contains both coding (exons) and non-coding (introns) regions. cDNA (complementary DNA) is synthetically created in a lab from mRNA and only contains the coding exons, making it structurally distinct from anything found in nature and thus patentable.

Q: How did the ruling affect healthcare costs?

A: The invalidation of the BRCA patents ended Myriad’s monopoly on genetic testing for hereditary cancers. This spurred competition, leading to a significant reduction in the cost of BRCA testing and greater patient access to crucial diagnostic information.

Q: Is there still an attempt to allow gene patenting?

A: Yes. There have been periodic legislative efforts in the US Congress, such as the Patent Eligibility Restoration Act, aimed at amending Section 101 of the Patent Act in ways that critics argue could overturn the Myriad decision and allow for the patenting of naturally occurring genetic sequences again.

Disclaimer: This content was generated by an AI assistant and is for informational purposes only. It is not a substitute for consultation with a qualified Legal Expert or Intellectual Property Expert. The law, particularly concerning biotechnology, is subject to change, and specific facts will always affect a legal outcome. Always consult a professional for advice regarding your specific intellectual property rights or legal situation.

The legacy of Myriad Genetics is a clear mandate: the building blocks of nature are free to all. For innovators in the genetic space, the future of intellectual property lies not in discovering what nature has already made, but in creating novel applications and synthetic compositions that advance human health. Consult an Intellectual Property Expert to navigate the ever-evolving line between discovery and invention in the world of gene patents.

Gene Patent, Myriad Genetics, Patent Eligibility, Isolated DNA, cDNA, Supreme Court, BRCA1, BRCA2, Product of Nature, Intellectual Property, Genetic Testing, Patent Act, Diagnostic Tests, DNA Sequencing

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