To patent or not to patent. That is the question … at least it has been for the past two years as the courts have been offering up differing opinions on the matter. And the American Civil Liberties Union (ACLU) has had enough. It asked the Supreme Court on Tuesday to answer that question—or more specifically, to invalidate gene patents.  

The cases date back several years, but most recently, the Federal Circuit last month held firm in its July 2011 ruling in Association For Molecular Pathology v. US Patent and Trademark Office after the high court had asked it to go back and reconsider its decision in light of the more recent ruling in Mayo Collaborative Services v. Prometheus Laboratories. In Association For Molecular Pathology, the Federal Circuit said genes can be patented. But earlier this year, the high court in Mayo Collaborative Services invalidated patents on evaluating a patient’s response to a drug.

“In our view, the court of appeals did not fully consider or correctly apply the Supreme Court’s most recent and relevant patent law decisions,” Chris Hansen, a staff attorney with the ACLU Speech, Privacy and Technology Project, said in a statement. “DNA occurs naturally in the human body and cannot be patented by a single company that can then use its patents to limit scientific research and the free exchange of ideas.”

The patents in question give Myriad Genetics Inc., a molecular diagnostic company, the right to perform tests on two specific genes: one that indicates an increased risk for breast cancer and another that indicates an increased risk for ovarian cancer. That means that other labs could not perform those tests unless they have permission from Myriad, the patent holder.

Although the Supreme Court will likely give Myriad a chance to respond before deciding to hear the case, most experts agree the high court will have the question of gene patentability on its docket in the near future.

Read more about this story in the Wall Street Journal.

For more information on this and similar cases, look for the IP story in the November issue of InsideCounsel, and see:

Court may uphold gene patent ruling

Mayo v. Prometheus cuts back on patentable inventions

Human genes may not be patented