p19
Further undercutting the PTO’s practice, the United
States argued in the Federal Circuit and in this Court that
isolated DNA was not patent eligible under §101, Brief for
United States as Amicus Curiae 20–33, and that the
PTO’s practice was not “a sufficient reason to hold that
isolated DNA is patent-eligible.” Id., at 26. See also id.,
at 28–29. These concessions weigh against deferring to
the PTO’s determination.7
cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. As
already explained, creation of a cDNA sequence from
mRNA results in an exons-only molecule that is not naturally occurring.8 Petitioners concede that cDNA differs
from natural DNA in that “the non-coding regions have
p20
been removed.” Brief for Petitioners 49. They nevertheless argue that cDNA is not patent eligible because “[t]he
nucleotide sequence of cDNA is dictated by nature, not by
the lab technician.” Id., at 51. That may be so, but the lab
technician unquestionably creates something new when
cDNA is made. cDNA retains the naturally occurring
exons of DNA, but it is distinct from the DNA from which
it was derived. As a result, cDNA is not a “product of
nature” and is patent eligible under §101, except insofar
as very short series of DNA may have no intervening
introns to remove when creating cDNA. In that situation,
a short strand of cDNA may be indistinguishable from
natural DNA.9
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Nor do we consider the patentability of DNA in which
the order of the naturally occurring nucleotides has been
altered. Scientific alteration of the genetic code presents a
different inquiry, and we express no opinion about the
application of §101 to such endeavors. We merely hold
that genes and the information they encode are not patent
eligible under §101 simply because they have been isolated
from the surrounding genetic material.
* * *
For the foregoing reasons, the judgment of the Federal
Circuit is affirmed in part and reversed in part.
It is so ordered.
<50%
[
link to www.supremecourt.gov (secure)]
United States
Canada
