Vedder Thinking | News Deborah L. Lu Discusses Patent Eligibility in Life Sciences Law & Industry Report
Deborah L. Lu, Ph.D., a Shareholder in the New York office of Vedder Price and a member of the firm's Intellectual Property group, was quoted in a Bloomberg BNA Life Sciences Law & Industry Report article titled "CAFC Again Rules for Patent Eligibility of Claims on DNA; Reaction Mostly Positive."
On August 16, 2012, a Federal Circuit panel virtually duplicated its previous reversal of a district court's ruling and found patent claims related to two genes associated with breast cancer to be patent-eligible (Association for Molecular Pathology v. U.S. Patent and Trademark Office). The U.S. Court of Appeals for the Federal Circuit, reviewing the case again on remand from the Supreme Court after the High Court's surprise ruling rejecting method claim patent eligibility in Mayo Collaborative Services v. Prometheus Laboratories Inc., rejected the plaintiffs'/ appellants' argument that Mayo should undermine the patents' eligibility.
According to Ms. Lu, one thing that stood out was the Federal Circuit's efforts clarify that it was ruling on issues of patent-eligibility—not patentability. "The court also made it quite clear that any question of policy or health care was not within their purview. Even though I do not think it was necessary for the court to make this statement, I do think it addressed any detractors head on, especially those who proclaimed the decision to be disastrous for health care," Ms. Lu said. "By making the comment that they were ruling on issues of patent eligibility and not patentability, I also think that the Federal Circuit is taking a neutral stance with respect to the implications to the life sciences industry."
Reproduced with permission from Life Sciences Law & Industry Report, 6 LSLR 857 (Aug. 24, 2012). Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com