Skip to main content

Thank you for visiting nature.com. You are using a browser version with limited support for CSS. To obtain the best experience, we recommend you use a more up to date browser (or turn off compatibility mode in Internet Explorer). In the meantime, to ensure continued support, we are displaying the site without styles and JavaScript.

Unsettled expectations: how recent patent decisions affect biotech

Nature Biotechnology volume 29, pages 229–230 (2011)Cite this article

Subjects

A look back shows that broad patents are a thing of the past and biotech inventors face heightened requirements for patentability.

There is perhaps no industry more dependent on the value of intellectual property than biotech. Yet obtaining and enforcing patents has become more difficult in this technological space over the last decade. Not only must biotech inventions be new, useful and nonobvious, but they also must meet heightened requirements for patentability. Here we review several recent patent decisions that can profoundly affect the biotech industry. In these cases, the courts ruled on essential questions to patentability, including whether inventions are even eligible for protection. We discuss how changes in the law can affect decisions of whether and when to seek patent protection, the expectations of investors, and most importantly, the validity and enforceability of entire classes of patents.

This is a preview of subscription content, access via your institution

Access options

Rent or buy this article

Get just this article for as long as you need it

$39.95

Learn more

Prices may be subject to local taxes which are calculated during checkout

References

  1. Bilski v. Kappos, 561 US ___ (2010).

  2. 23 USC §101.

  3. Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403 (Fed. Cir. Dec. 17, 2010).

  4. Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634 and 2006-1649 (Fed. Cir. 2008).

  5. Association for Molecular Pathology v. USPTO and Myriad Genetics, Inc., No. 2010-1406 (Fed. Cir. 2010).

  6. In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).

  7. In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009).

  8. Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed. Cir. 2003).

  9. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

  10. In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).

  11. USPTO BPAI, Foundation of Taxpayer & Consumer Rights v. Patent of WARF, Appeal 2010-001854, Patent 7,029,913 (April 28, 2010).

  12. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

Download references

Author information

Author notes

  1. Christopher T. Scott is at the Stanford University Center for Biomedical Ethics, Stanford, California, USA.

  2. cscott@stanford.edu

Authors and Affiliations

  1. Brenda M. Simon is at the Thomas Jefferson School of Law, San Diego, California, USA, and is a non-resident fellow at the Stanford University Center for Law and the Biosciences, Stanford, California, USA;,

    Brenda M Simon & Christopher T Scott

Authors
  1. Brenda M Simon
    View author publications

    You can also search for this author in PubMed Google Scholar

  2. Christopher T Scott
    View author publications

    You can also search for this author in PubMed Google Scholar

Corresponding authors

Correspondence to Brenda M Simon or Christopher T Scott.

Ethics declarations

Competing interests

The authors declare no competing financial interests.

Rights and permissions

Reprints and Permissions

About this article

Cite this article

Simon, B., Scott, C. Unsettled expectations: how recent patent decisions affect biotech. Nat Biotechnol 29, 229–230 (2011). https://doi.org/10.1038/nbt.1795

Download citation

  • Published:

  • Issue Date:

  • DOI: https://doi.org/10.1038/nbt.1795

This article is cited by

Search

Advanced search

Quick links

Nature Briefing: Translational Research

Sign up for the Nature Briefing: Translational Research newsletter — top stories in biotechnology, drug discovery and pharma.

Get what matters in translational research, free to your inbox weekly. Sign up for Nature Briefing: Translational Research