In light of the US Supreme Court's recent ruling in the case of Mayo v. Prometheus, the court has sent the case of Association for Molecular Pathology, et al. v. U.S. Patent and Trademark Office, et al back to the US Court of Appeals for the Federal Circuit for further adjudication.
At Genomics Law Report, Dan Vorhaus and John Conley write that they expected this turn of events, but that it doesn't mean that the appeals court will change how it ruled the first time. "There is nothing in Prometheus to suggest that the Federal Circuit should or will change its mind about the method claims it invalidated once before (relating to comparing BRCA gene sequences in cancer patients to sequences in healthy patients to identify deleterious mutations)," Vorhaus and Conley say. "Nothing in Prometheus clearly compels the Federal Circuit to change its mind." Further, they add, Prometheus said nothing at all about product patents, so while the appeals court may revisit — though not reverse — its ruling on the company's method patents, the BRCA patents are most likely safe. In addition, says The Scientist's Sabrina Richards, the Supreme Court's decision to send the case back to the lower court "could allow Myriad to continue profiting from the patents for several more years, until a decision is reached."
The BioLawGics blog's Jonathan Loeb isn't so sure. In the Myriad case, the appeals court upheld the BRCA patents because, as Judge Alan Lourie wrote, "BRCA1 and BRCA2 in their isolated state are not the same molecules as DNA as it exists in the body; human intervention in cleaving or synthesizing a portion of a native chromosomal DNA imparts on that isolated DNA a distinctive chemical identity from that possessed by native DNA." But now that the Supreme Court has rejected Prometheus' patents, Loeb says, "this 'distinctive chemical identity' test seems a slender reed."