A Court Ruling in the ACLU v. Myriad Gene Patent Litigation, But We’re Still A Long Way From A Gene Patent Resolution

For nearly six months the Genomics Law Report has been covering the developments in the ACLU-instigated lawsuit against Myriad Genetics, the University of Utah and the U.S. Patent and Trademark Office (USPTO). In late July, Myriad and its co-defendants filed motions to dismiss the lawsuit. Yesterday, Judge Robert W. Sweet of the Southern District of New York finally denied those motions.

Judge Sweet ruled against the defendants in each of several separate motions to dismiss, including lack of subject matter jurisdiction, lack of personal jurisdiction and failure to state a claim. The always-comprehensive Patent Docs blog has a complete summary of yesterday’s ruling—as well as the court’s full opinion (pdf)—but there’s at least one part of the ruling that’s worth highlighting here.

In denying the USPTO’s motion to dismiss, in which the government alleged that the plaintiffs lacked subject matter jurisdiction, the court concluded as follows:

While the USPTO notes the existence of a comprehensive scheme to redress violations of the Patent Act, it cites to no comparable statutory scheme providing a remedy for persons who complain about the constitutionality of patents issued by the USPTO and/or the policies and practices of the USPTO. . . . In such circumstances, the Supreme Court has held that Congress did not intend to preclude enforcement of federal rights through private actions. . . . Indeed, even when Congress has created a statutory remedy, if that remedy is not coextensive with the remedy provided by the Constitution, plaintiffs may still bring a separate action to enforce the Constitution.

The novel circumstances presented by this action against the USPTO, the absence of any remedy provided in the Patent Act, and the important constitutional rights the Plaintiffs seek to vindicate establish subject matter jurisdiction over the Plaintiffs’ claim against the USPTO.

Patent Docs concludes that “. . . in keeping the USPTO in the case, the judge left the government with sufficient skin in the game to motivate a spirited defense of gene parent [sic]  as appropriate public policy. . . .” However, as we have noted previously on the GLR, there is already substantial internal debate within the government’s patent policymaking bodies, including the Secretary’s Advisory Committee on Genetics, Health and Society (SACGHS), about whether or not gene patents make for appropriate public policy.

Despite the court’s ruling, the future of gene patents is no clearer today than yesterday. And before 2009 is through we expect to see additional rulings from the district court – the motions for summary judgment filed in August still await a ruling – along with a final report on gene patent recommendations from the SACGHS gene patent taskforce. The GLR will continue to cover these and other relevant developments as they unfold.

To read more about the ACLU / Myriad litigation and the continuing uncertainty surrounding gene patents please see: