Journal: Genomics
Subject: Invalidation
Court: Judge Robert W. Sweet of the Southern District of New York
Parties : Association of Molecular Pathology v. U.S. Patent and Trademark Office
Commentary: Patent Docs Biotech and Pharma Law News Blog
Title: Caught in a Time Warp: The (In)validity of BRCA1 Oligonucleotide Claims
Date: March 30, 2010

Head over to Patent Docs Blog for an excellent writeup by Kevin E. Noonan of Mcdonnel, Boehnen

"The study is interesting in that it illustrates the pitfalls in patents on oligonucleotides related to isolated genes, filed at a time prior to the elucidation of the human genome by the Human Genome Project. Most relevant to the question of whether such claims are patentable are the many revelations from the HGP that overturned settled dogma based on a now-recognized unrealistic view of the randomness of genomic DNA sequences, as illustrated by the results reported in this study." - Kevin E. Noonan

Sherri Voebel
Patentskill LLC
Chicago, IL


  1. There are two articles in today's (3/31) New York Times on this ruling. They can be found online by clicking on the Science tab and scanning titles.

  2. And I'll be addressing this case during my presentation entitled "Do You Own Your Own Genes?  The Future of Gene Patents." at the PIUG Annual Meeting.  My paper is scheduled for Monday afternoon in the 1:30 - 3:00 panel session "Moving Targets from Changes to Practices at the USPTO."

    Little did I realize when I submitted my abstract for consideration at this meeting what a "moving target" this topic would be.


    Martin Goffman, Ph.D.
    President and CEO                             Tel: +(732) 549-5433
    SequenceBase Corporation
    mgoffman @

  3. Sherri Voebel AUTHOR

    Announcement: April 02, 2010

    When:  Sunday, April 4:  7 p.m. ET/PT

    Who:  Morley Safer and Kevin Noonan

    Where:  CBS - 60 Minutes 

    Patenting for Profit... The segment will examine the question of whether "companies should be able to own human genes," and "the idea of biotech firms patenting genes for profit"

    Preview of the program and video clip can be found here:;cbsCarousel (Video Preview)

    The timing of the segment is perhaps appropriate given Monday's ruling by the District Court for the Southern District of New York in Association of Molecular Pathology v. U.S. Patent and Trademark Office. The District Court determined that the claims of several patents directed to the BRCA1 and BRCA2 genes were invalid as encompassing non-statutory...