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Circuit Court Re-hears Myriad Case in Wake of Prometheus Ruling

July 20, 2012

Robert Sachs, partner in the Intellectual Property Group with Fenwick & West, was recently quoted in the Genome Web article, "Circuit Court Re-hears Myriad Case in Wake of Prometheus Ruling."

On July 20, 2012, the Court of Appeals for the Federal Circuit heard oral arguments in a case that could have far-reaching implications for US gene patent laws.  The Myriad Genetics case was remanded back to the Federal Circuit Court to be re-considered after the Supreme Court’s decision in Mayo v. Prometheus, invalidating certain gene patents that affect Myriad Genetics' patent claims related to breast cancer risk genes.

Robert Sachs, intellectual property attorney with Fenwick and West, said that in amicus briefs filed with the CAFC, Myriad's opponents claimed the BRCA1 and BRCA2 technologies are laws of nature, with some arguments centering on whether chemicals are products of nature, and likely not patentable, or if they can be viewed as information, which could be patentable.

Sachs explained the Myriad case is happening within a larger context of confusion about the patentability of natural products that has not been cleared up even post-Prometheus.

"There is no way to say that the law will be clear. Confusion will still reign," Sachs said. "[That is] because the jurisprudence in this area is fundamentally flawed. That is because the court has never thought very hard about what it is talking about when it talks about 'laws of nature.' What is it talking about when it talks about 'abstract ideas.' The court has not spent any time thinking about those questions at a hard level."