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Timo Minssen and Robert M Schwartz

In March 2011 the Supreme Court issued its Prometheus opinion and granted certiorari, and reversed and remanded Myriad I for consideration in light of Prometheus. In August 2012 the Myriad II decision was issued. The panel in Myriad II repeated most of their separate Myriad I opinions. Myriad déjà vu looked much like Myriad I with panel members agreeing that Prometheus did not control the composition of matter claims. The opinions differed on whether composition claims were to be analysed from a chemical, structural or carrier of information standpoint with respect to laws of nature. The rationales used such rhetorical metaphors as cleaving, baseball bats, magic microscopes, extracted kidneys, slabs of marble or marble statues, the Sistine Chapel, and whether cells were ‘transformed’ molecules or ‘carriers of information’. The differing evaluations of patent-eligibility and the cursory manner in which they addressed the Supreme Court's GVR mandate may well guarantee a return appearance before the Supreme Court or, at a minimum, en banc review by the Circuit.

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Timo Minssen and Robert M Schwartz

As discussed in the previous issues of QMJIP, the Federal Circuit's decisions in Myriad I and II appear to provide considerable prospects for patentees, as clever claim drafting may still help to avoid most patent-eligibility traps set by the much debated US Supreme Court decision in Prometheus. Yet, the split opinions also contain elusive reasoning by each of the three judges. The questions left open by Prometheus and the remaining split at the Federal Circuit with regard to inter alia DNA-related product claims provide excellent fodder for another US Supreme Court review with potentially broad implications for biotech patents. Acknowledging the criticism of excessively broad upstream patent claims and referring briefly to corresponding European debates, Part IV of this series finally discusses the recent developments from a broader innovation-policy perspective. Highlighting the mitigating effects of additional factors, such as higher thresholds for other patentability criteria, scientific advances, post-grant mechanisms and the dynamic qualities of biomedical innovation, the authors note that overly static eligibility doctrines entail considerable risks for technological progress. While it is essential that the Supreme Court further clarifies its principles, the authors urge it not to categorically close the ‘patent-eligibility door’ to important emerging technologies.