European Patent Office Narrows the Scope of a Human Cancer Gene Patent

On January 21, 2005, the European Patent Office (EPO) held that the second of three patents in a series owned in part by Myriad Genetics Inc (Myriad) of Salt Lake City should be narrowed from the approximately 30 claims contained in its application to three. The patents cover different aspects of the human BRCA1 gene and relate to the diagnosis and of breast and ovarian cancer. The patent at issue ("17Q – Linked breast and ovarian cancer susceptibility gene") was granted in November 2001 and originally covered claims to the entire gene. However, because the first of the three patents in the series was subsequently revoked by the EPO (due to errors in the gene sequences in the claims) and the second patent's priority date was linked to that of the first, the second patent has now been restricted to uses of the gene in diagnosis, as opposed to the gene itself. This series of Myriad cancer patents has attracted controversy especially because of the associated restrictive licensing policy, involving a price of about $US 3000 for each cancer test and requiring samples to be sent to Myriad for analysis. Opposition proceedings have attracted well-known NGOs such as Greenpeace and the Institut Curie. The third basic patent in the series (covering mutations to the gene) will be the subject of a hearing on January 24 by the EPO opposition division. This third patent is owned jointly by the University of Utah Research Foundation, the Japanese Cancer Institute and the Centre de Recherche du CHUL at Université Laval, Québec. If appeals are taken from all of these decisions, it may be 2007 before the issues are settled. For a Legal Media Group news story (and further links to EPO files on all patents in the series), visit: http://makeashorterlink.com/?W2602125A. Summary by: The Editor