At long last the central questions in the Myriad Genetics patent case have been answered by the U.S. Supreme Court, but the mixed opinion handed down on June 13th has left a host of critical questions and gray areas for attorneys, TTOs, researchers, investors, and biotech companies. The ruling affects thousands of biotechnology, agricultural and drug patents – and even more gene-based research projects and early-stage technologies not yet patented.
Although the court drew a clear line barring patent protection for claims based on isolated DNA using the “products of nature” tenet, the unanimous ruling also stated that Myriad’s patent claims for cDNA are enforceable and valid.
The science behind the use of DNA in diagnostics, agriculture, and other technologies – and how that DNA is altered and utilized – is critical in determining eligibility, but how the ruling will be applied to specific innovations given the complexity and variety of DNA-based technologies is foggy at best.
For TTOs, IP attorneys and innovators, the case does offer some very significant barriers to patent protection, as well as some likely safety zones and many more unknowns that won’t become clear for years as lower courts apply the ruling. What is sure, however, is that the decision will have a major impact on DNA-based research approaches, claim drafting strategy, patent and investment decision-making, and licensing strategy for gene-based innovations.
To help clarify and assess Myriad’s effects for IP and research commercialization professionals, we’ve invited one of the world’s top life sciences patent attorneys — Kevin E. Noonan, PhD, of McDonnell Boehnen Hulbert & Berghoff LLP – to address the ruling as well as provide guidance on how to adapt and preserve or even enhance the value of gene-based technologies.
If your university, business, or law firm has a stake in the massive biotech market, you won’t want to miss this critical one-hour program:
Analyzing and Adapting to the Supreme Court’s Myriad Ruling: Patent and Licensing Strategies for DNA-based Technologies
Here’s a brief look at what Dr. Noonan will cover in this interactive session:
- Clearing the cobwebs: What’s eligible, what’s not, and what’s in no-man’s land
- Impact on patented technologies – what now?
- How to guide researchers with an eye on subject matter eligibility
- Making adjustments to claim drafting strategy
- Dealing with existing licenses, and impact on future licensing strategy
- How the Myriad decision will force changes at the USPTO
- Assessing the potential impact on stem cell and other gene-based research
- Unanswered questions still to be decided by interpreting courts, and where to place your bets
Your Program Expert:
Kevin E. Noonan, PhD, partner with McDonnell Boehnen Hulbert & Berghoff LLP, has extensive experience in biotechnology and the chemical arts. He brings more than 10 years of experience as a molecular biologist working on high-technology problems to his legal work. He has wide experience in all aspects of patent prosecution, interferences, litigation, and client counseling on validity, infringement, and patenting strategy matters. He represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing. He is also a co-founder of the biotech and pharma news and patent law weblog, Patent Docs (www.patentdocs.org).
