strikes a delicate balance between creating “incentives that
ASSOCIATION FOR MOLECULAR PATHOLOGY ET AL.
v. MYRIAD GENETICS,
Facts:
Respondent Myriad Genetics, Inc. (Myriad), obtained
several patents after discovering the precise location and
sequence of the BRCA1 and BRCA2 genes, mutations of
which can dramatically increase the risk of breast and
ovarian cancer. This knowledge allowed Myriad to determine
the genes’ typical nucleotide sequence, which, in turn,
enabled it to develop medical tests useful for detecting muta-
tions in these genes in a particular patient to assess the
patient’s cancer risk. If valid, Myriad’s patents would give it
the exclusive right to isolate an individual’s BRCA1 and
BRCA2 genes and would give Myriad the exclusive right to
synthetically create BRCA cDNA. Petitioners filed suit,
seeking a declaration that Myriad’s patents are invalid.
Issue: WON Myriad’s patents are invalid
Held: A naturally occurring DNA segment is a product of
nature andnot patent eligible merely because it has been
isolated, but cDNA ispatent eligible because it is not
naturally occurring.
(a) The Patent Act permits patents to be issued to “[w]hoever
invents or discovers any new and useful . . . composition of
matter,”, but “laws of nature, natural phenomena, and
abstract ideas”“ ‘are basic tools of scientific and technological
work’ ” that lie beyondthe domain of patent protection, Mayo,
supra, at ___. The rule against patents on naturally
occurring things has limits, however. Patent protection
lead to creation, invention, and discovery” and
“imped[ing]the flow of information that might permit, indeed
spur, invention.” Id., at ___. This standard is used to
determine whether Myriad’s patents claim a “new and useful
. . . composition of matter,” orclaim naturally occurring
phenomena.
Myriad’s DNA claim falls within the law of nature
exception.Myriad’s principal contribution was uncovering
the precise locationand genetic sequence of the BRCA1 and
BRCA2 genes. Diamond v. Chakrabarty, 447 .U. S. 303, is
central to the patent-eligibility inquirywhether such action
was new “with markedly different characteristics from any
found in nature,”. Myriad did not create oralter either the
genetic information encoded in the BCRA1 andBCRA2 genes
or the genetic structure of the DNA. It found an important
and useful gene, but groundbreaking, innovative, or
evenbrilliant discovery does not by itself satisfy the inquiry.
PATRICK HENRY FRANK and WILLIAM HENRY
GOHN vs. G. KOSUYAMA
Facts:
The action was based upon alleged infringement by the
defendant of the rights and privileges acquired by the
plaintiffs over the aforesaid patent through the manufacture
and sale by the former of machines similar to that covered by
the aforesaid patent.
Patent No. 1519579 on improvement in hemp stripping
machines, issued by the United States Patent Office, and
registered in the Bureau of Commerce and Industry of the
Philippine Islands on March 17, 1925, was the origin of this
action brought by the plaintiffs herein who prayed that
judgment be rendered against the defendant, ordering him
thereby to refrain immediately from the manufacture and
sale of machines similar to the one covered by the patent; to
render an accounting of the profits realized from the
manufacture and sale of the machines in question; that in
case of refusal or failure to render such accounting, the
defendant be ordered to pay the plaintiffs the sum of P60 as
profit on each machine manufactured or sold by him; that
upon approval of the required bond, said defendant be
restrained from continuing the manufacture and sale of the
same kind of machines.
called "spindle" or conical drum which was then in actual use
in the Dringman and Icsiar hemp stripping machines.
The def endant cannot be made civilly liable for alleged
infringement of the patent on which the action is based on
the ground that the machines manufactured and sold by him
did not have any essential part unknown to the public in the
Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved abaca stripping
machines.

Issue:

Held:
We agree with the trial court that, strictly speaking, the
hemp stripping machine of the plaintiffs does not constitute
an invention on the ground that it lacks the elements of
novelty, originality and precedence.

In fact, before the plaintiffs herein obtained their patent,

they themselves had already publicly used the same kind of
machine for some months, at least, and, various other
machines, having in general, the same characteristics and
important parts as that of the said plaintiffs, were known in
the Province of Davao.

Machines known as Molo, Riesgo, Crumb, Icsiar, Browne and

McFie were already known in that locality and used by the
owners of hemp plantations before the machine of the
plaintiffs came into existence. It may also be noted that
Adrian de Icsiar applied for a patent on an invention which
resulted in the rejection by the United States Patent Office
of the plaintiffs' original application for a patent on the so-