Judge: Gene Patents Are Invalid

from the huge-news dept

In a huge ruling, U.S. District Judge Robert Sweet has said that gene patents are invalid. As you may recall, last May, the ACLU was the first to finally challenge whether or not genes could be patented. There was a lot of back and forth over the case, with many saying that a ruling against gene patents would throw a wrench into the business plans of many companies, because so many biotech/medical companies have been relying on the idea that gene patents must be valid for so long. But just because many companies relied on a mistaken understanding of patent law, doesn’t mean that it should be allowed to continue. The judge made the point clear when it came to gene patents, saying that they:

“are directed to a law of nature and were therefore improperly granted.”

The case was brought against Myriad Genetics, who will surely appeal, so this is nowhere close to over. But it involved a test for breast cancer, that Myriad basically had a monopoly over — and the claim was that this not only made it more difficult for women to get tested, but it also greatly discouraged other research in the field. In part, this was because the patents that Myriad held were incredibly broad.

Patents, of course, are not supposed to be granted on things found in in nature — and it’s hard to argue against the idea that genes are found in nature. Supporters of gene patents often claim that they’re not really gene patents, but a patent on identifying the gene, which is a nice semantic game that the judge clearly saw through. This is a huge step forward for encouraging more real research into genetic testing, rather than locking up important information.

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Companies: aclu, myriad genetics

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Comments on “Judge: Gene Patents Are Invalid”

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crade (profile) says:

As far as I can tell, Myriad Genetics is right, there is nothing different about gene patents that doesn’t also apply to other types of patents. It could just as easily be patents on something else that made it more difficult for women to get tested, but it also greatly discouraged other research in the field. Any patent related to medicine or healthcare has that potential.

Mr. Oizo says:

Re: Re:

Of course I disagree. Performing a correlation analysis between gene expression and diseases is fairly common and is quickly becoming so easy that it is just a matter of grabbing the proper biomarkers to predict stuff.

Essentially: this is not an invention it is a discovery. Screening something that makes use of such discovery is just such basic biology that the screening technique cannot even be considered as sufficiently advanced.

What would be more interesting than screening is the healing itself.

crade (profile) says:

Re: Re: Re:

I just don’t see how the arguments provided don’t apply to patents in other areas just as easily.

I suppose I don’t really see the line between unimplemented invention and discovery.. If the idea is not a sufficient advancement, then it is not a sufficient advancement. Then this idea is not worthy of a patent.. How does it extend to “ideas in this field can never be worthy of patents”.

Anonymous Coward says:

Re: Re: Re: Re:

Well, you’re kind of in the wrong place to be discussing this, because a lot of this site is dedicated to showing how patents are so general and broad that they never should’ve been granted in the first place.

In other words, this argument should apply to other areas, but it isn’t applied enough.

Mr. Oizo says:

Re: Re: Re: Unimplemented Invention vs Discovery

Let’s say: I have an idea of a tool i would like to make: that is an unimplemented invention

I find something growing in the grass and I eat it: that is a discovery.

The first I might be able to patent; the second is something I found and should never be patentable.

In this case finding BRCA (that is what I think they are talking about) is a discovery, not an unimplemented invention.

Anonymous Coward says:

Re: Re: Re:2 Unimplemented Invention vs Discovery

The judge stated that the invention must have a specific method of functioning. An “unimplemented invention” would need to have a specific function, and method to that function that describes the invention in entirety. The patent in question had no specific functionality or method, and only mentioned specific discoveries that may be applied in general.

raj says:

Re: Re: Re: Re:

if you dont understand the distinction between discovery and invention, I doubt that you will understand that discoveries are not patent-able only inventions are. Discovery of genes are like drawing a map of a newly discovered island. And as you minght know, maps are copyright, not patent-able. Someone else and survey(discover) the island on their own, create a map and sell it. With patents on gene, another person is not even allowed to look at the gene. These companies are NOT patenting the ‘process’ to isolate the gene or invention to modify or fix a gene. they are patenting the gene itself (akin to patenting the island)

Anonymous Coward says:

Re: Re: Re:

I agree with your assessment. The techniques for finding genes are reasonably well known. People are motivated to find genes that might be associated with significant diseases (patent practitioners call this TSM, or teaching, suggestion or motivation). So, you have the technical capability and you have the motivation. It would seem like these things would not be patentable under that scenario, in addition to the fact that the genes are indeed found in nature.

Richard (profile) says:

Re: Re:

As far as I can tell, Myriad Genetics is right, there is nothing different about gene patents that doesn’t also apply to other types of patents.
Looks like you can’t tell very far…

There is a difference between a discovery and an invention.

Genes are discovered.

Light bulbs, gramophones, lasers and the like have to be invented – they weren’t “out there” in nature beforehand like genes. It’s a fairly basic distinction, I’m surprised you couldn’t see it.

Lonny Paul (profile) says:

Goodbye to lawsuits against farmers by GMO Corn Mfg!

There have been hundreds of suits against farmers who had a crop cross-pollinate with neighboring GMO crops. They were subsequently sued for Patent violation – and have WON, destroying many farmer’s lives.

Hopefully, this will stick and all GMO seeds will no longer be patented and the world will be a better place for bad companies with not enough to do!

Steve R. (profile) says:

Re: Re:

“If they are unable to patent genes then there wouldn’t be much motivation.”

So what. Theoretically we live in a free-market system. What this means is that products come into existence when there is demand for them. If you invent a product and it is uneconomic, too bad.

You ignore the role of university research. It is quite unfortunate that taxpayer dollars can be used by private entities to patent products that should be in the public domain. See the Bayh-Dole Act

Also see How Patents Have Harmed University Research

Philip123 (profile) says:

This is excellent news! James Watson co-discoverer of DNA was opposed to such patents and when NIH overuled him he left, or was forced out, in 1992. As the judge correctly notes these are products of nature not intellectual products. Now we are in the absurd position of being able to cheaply and rapidly sequence a persons entire genome. Is every single nucleotide polymorphism found in the individual by the testing company open to being patented. It is to my mind akin to buying a microscope and then claiming a patent on whatever components of life I find there. What about, again as the judge noted, the problem with stifling scientific advance by not being able to openly study the gene in question. I would go one further and say that no DNA sequence whether created artificially or found through sequencing may be patented. Quite often these sequences end up in self replicating or potentially self replicating organisms. There is an interesting story http://healthjournalclub.blogspot.com/2010/03/astonishing-court-case-of-becky-mcclain.html of a microbiologist who is claiming she was inadvertently infected by a genetically engineered virus. The company however, is refusing to release the sequence of the virus in question. Well what if that virus or a future one turned out to be contagious. Can you even place a patent on a computer virus, how much more foolish to claim there is patent protection is the virus might someday be able to kill you. At the very least, requests by health practitioners or public health officials should over rule patent claims, whether a sequenced part of a genome or one made from scratch. Glad to see this ruling.


Richard (profile) says:

Re: Computer Virus Copyright Scam

Can you even place a patent on a computer virus,
No – but it does fall under copyright!

Hey I just thought of a great scam.

Step 1 create computer virus

Step 2 register copyright

Step 3 release virus

Step 4 Sue everyone who has an infected computer for infringement and demand statutory damages.

Somone tell me why this doesn’t work under current law (it matches Monsanto’s tactics quite closely)

anymouse (profile) says:

Re: Re: Re: Computer Virus Copyright Scam

This doesn’t apply in the case of Monsanto wiping out farmers who suffered from ‘wind drift’ of their neighboring farms. Where the farmers did nothing to get infected, but because patented plants were found on their property, they were held liable.

So again, explain why this isn’t the same as infecting someone with a computer virus, then suing them for patent infringement.

Anonymous Coward says:

Re: Re: Re:2 Computer Virus Copyright Scam

In the case of infecting someone’s computer with a virus, the person doing the infecting took affirmative action to place the virus on a person’s computer.

In the case of GMO’s going onto a farmer’s land, the owner or creator of the GMO did not deliberately place the GMO on a neighboring farmer’s land.

Just because the scenarios are different and because I explained them does not mean I support suing farmers on neighboring land. In fact, it seems like that the GMO should take affirmative action from preventing their GMO from drifting onto a neighboring farmer’s property. What if you do not want the GMO? I saw a recent article that said two things:

(1) GMO crops have lower yields than non-GMO crops.

(2) Weeds are developing resistance to Roundup, which means the effectiveness of Roundup is decreasing.

Plus, there are questions that are being raised regarding the safety of Roundup, which I think has been banned in some European countries.

In a few more years this entire conversation will be moot. The Roundup soy bean patents expire in 2014, I think, and the corn patents expire a couple of years later. Unfortunately, by then Roundup may be of far less use than it once was.

Anonymous Coward says:

Re: Re: Re:3 Computer Virus Copyright Scam

It doesn’t matter anyhow. I hate Monsanto as much as the next guy, but I figure we should use real data to back it up. The scenarios everybody uses aren’t really happening.

How many farmers have been sued due to cross-pollination from neighboring fields? The answer is “not many”. Most are violations of contracts after purchasing RoundUp Ready seed, and while Monsanto’s agreements may be draconian, and their tactics Spanish-Inquisition-esque, this has nothing to do with cross-pollination.

Percy Schmeiser is an example that is used a lot, but he knowingly sprayed his fields with RoundUp to select for the resistant seed and specifically planted that the next year. It makes the case far less cut and dry since he knew he was planting 80-90% RoundUp Ready seed the following year.

So, once again, please hate on Monsanto. Hate on their draconian rules, their probably illegal practices, and genetic patents as a whole, but lets not end up using bad data (and as a corollary, feel free to correct anything that I’ve written).

Anonymous Coward says:

Re: Re: Re:4 Computer Virus Copyright Scam

Have to agree with you here. I keep hearing people claiming that thousands or tens of thousands of farmers have been sued by Monsanto because their farms were contaminated by GM seed. Yet, when you try to research actual numbers you come up with anecdotes, but very little data. Hyperbole seems to be a frequent substitute for facts.

Reagan says:

I doubt this ruling will affect the Monsanto lawsuits

Because they can argue much more effectively that their GMOs *are* in fact inventions, in that they do not occur in nature but were created in a lab. I’m sadly unfamiliar with the lawsuits that they’ve won, but if they have successfully farmers sued because their products cross-pollinated with the farmers, hopefully other legal strategies willbe able to prevent that.

If this ruling stands it’ll be an enormous boon for science and health. It’s always been ridiculous on its face that companies could patent the application of widely used techniques to identify or characterize genes. I’m glad to see a judge agree

Sam Watkins (profile) says:

all patents are invalid

Nuff said. If I ever need to write a program that uses patented code, I will simply release it anonymously on networks that cannot be censored (to the public domain). Newton and Leibniz came up with the infinitesimal calculus independently and concurrently. Most patented inventions are simpler and more obvious than this calculus. A work of art, that could not ever be reinvented, is one thing. An invention that is a simple, obvious combination of well-known ideas is something else. If something could ever be reinvented by someone else, it should not be allowed to patent it.

Tredder (profile) says:

Gene Patents

Thank goodness! Patents, in general, were designed to encourage dissemination of new concepts while giving the originator a chance to benefit for a defined period of time.

Unreasonably broad patents on discoveries have done just the opposite. They have stifled further improvements to technology for the benefit of society simply because of the effective stranglehold the beneficiaries of these “patents” have managed to garner.

This has been a long time in coming. Thanks be to an astute judge.

selenius says:

The article is not entire clear what “gene patents are invalid” means. I am sure that Myriad Genetics will be able to overturn this ruling if it involves a gene that has been manipulated or created i.e. a new development, or a new combination that does not occurs in nature. However, i hope that the ruling stands because genetic engineering is in its infancy and the current GE that is going on is a danger to this world. A little bit if knowledge is a dangerous thing, not to mention the grossly unfair practises of Monsanto against farmers.

Bill Hoag (profile) says:

I created the animal

and it is registered with the US Patent and Trademarks Office in Washington DC as a living animal, namely a sheep. Interesting as I have spent in excess of $2 million dollars of my own personal money to create this animal over 20 years. Now I can’t produce enough of these animals to meet the demand, they possess novel polymorphisms never been found anywhere in the world in any animal; and if I continue they have the cure to many neurological diseases in humans; and some JUdge is going to tell me I don’t own the animal and everything inside the animal? PS Wasn’t Penicillan developed from plants?

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