Here's the latest presentation of argument and discussion of an amicus brief filing in the AMP vs USPTO (Myriad case) - this time from the University of New Hampshire School of Law - as presented in the Patent Doc blog.
The brief was filed by two Professsors at the school, J. Jeffrey Hawley and Ann McCrackin. They criticized Judge Sweet's decision on three major points:
- Implementing a new restriction on patentable subject matter
- Applying the incorrect standard in rendering a summary judgment
- Ignoring duty to uphold controlling federal patent law
In a nutshell, the Professors argue that isolated DNA meets the standards to be patent eligible as a composition of matter claim under Chakrabarty. In denying this, the court is essentially establishing a new limitation on patent-eligible subject matter.
With regard to the summary judgment standard, the two learned Professors argue that Judge Sweet could proceed to summary judgment only if the material facts in the case that were not in dispute. The patent eligibility and differences between native and isolated DNA were certainly in dispute and therefore a summary judgment was improper in this instance.
With regard to federal patent law, the Sweet decision was improper as it did not extend the Myriad patents the 'presumption of validity' as required by federal statute for issued patents. The Professors say the only way the Sweet court can make this decision is if it also declares rule 282 unconstitutional. The Professors argue that since this was not the case, the Sweet court committed clear error in not granting a presumption of validity. Once this had been done, the plaintiffs in the case failed to meet the standard to overturn --as they failed "to produce clear and convincing evidence that isolated DNA does not have distinctive uses."
The upshot of all this, I think, is what most legal analysts have been contending from the beginning - the Sweet decision will be overturned on appeal as a matter of patent law. If then, the Legislative branch wants to enact different public policy goals (e.g. limit gene patents in some way, compulsory licensing, etc), then that would be the more appropriate remedy legally.
Posted by Bruce Lehr December 13th 2010.