CHICAGO, June 19, 2012 – In an amicus brief filed in Association for Molecular Pathology et. al. v. U.S. Patent and Trademark Office and Myriad Genetics Inc., the American Bar Association is urging the U.S. Court of Appeals for the Federal Circuit to hold that isolated DNA compounds are not per se disqualified from patent eligibility under 35 U.S.C. § 101, that patent determinations should continue to be made on a claim-by-claim basis, and that the U.S. Supreme Court’s decision in Mayo v. Prometheus does not require otherwise.

In its brief, the ABA addressed only whether the compound at issue was patent-eligible. The ABA did not address the process claims that are also in dispute.

ABA policy supporting the patent eligibility of such compounds was developed by the association’s Section of Intellectual Property Law, whose 25,000 members represent patent owners, inventors, large and small corporations, and universities and research institutions across a wide range of technologies and industries.

The brief explains that the ABA’s position resulted from an extensive collaborative process, reflecting “a consensus view based on the experience of legal professionals working in this field that the determination of patent eligibility for Isolated DNA Compounds should be developed incrementally, in response to potentially unforeseen technical advancements, rather than through categorical exclusions that would unreasonably stifle innovation by undermining current biotechnology industry investment expectations.”

The brief is available online here.

With nearly 400,000 members, the American Bar Association is the world’s largest voluntary professional membership organization. As the national voice of the legal profession, the ABA works to improve the administration of justice, promotes programs that assist lawyers and judges in their work, accredits law schools, provides continuing legal education, and works to build public understanding around the world of the importance of the rule of law.

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