Abstract

     Following the Court of Appeals for the Federal Circuit’s decision in In re Fisher many media reports seemed to imply that patents for expressed sequence tags (“ESTs”) were no longer possible. This comment examines the rationale behind the court’s decision to deny Fisher a patent for five EST sequences. Section II discusses the history of the utility requirement and its application to Fisher. Section III explores the two legal issues that arise from Fisher, (1) whether Judge Rader’s reasoning in his dissenting opinion should bear any weight in future utility cases for biological inventions; and (2) whether patentable subject matter is still available for ESTs. Section IV proposes that Judge Rader’s dissenting opinion should not be employed in future cases. Section IV also proposes that some applications of ESTs can provide limited but substantial and specific utility, thus meeting the Fisher standard.