The Problems of the Utility Analysis in "Fisher" and Its Associated Policy Implications and Flaws

Expressed sequence tags (ESTs) are short DNA sequences containing the information to code usually a portion of a protein, and many debate whether they should be patented.1 In 'In re Fisher', the Court of Appeals for the Federal Circuit found that, despite having several potential uses as research tools, ESTs lacked utility, which is required for patentability. The court's analysis of utility was flawed, however, because it did not apply the traditional evidentiary standard, misapplied its own evidentiary standard, failed to recognize there was sufficient substantial utility as a research tool under 'Brenner v. Manson', and altered the specific utility requirement in detrimental ways without distinguishing or reconciling prior precedent.