More On The Gene Patent Ruling: What Happens Next

from the onto-the-appeal dept

The big news yesterday, of course, was the district court ruling that found that genes were unpatentable. The full decision was over 150 pages, so I wanted to spend some time reading through it. It’s mostly a really good ruling that makes a number of important statements. Dan Vorhaus has a good post highlighting some of the key points, including this particular sentence:

The identification of the BRCA1 and BRCA2 gene sequences is unquestionably a valuable scientific achievement for which Myriad deserves recognition, but that is not the same as concluding that it is something for which they are entitled to a patent.

This is a point that often seems to get lost in this debate, with patent system supporters assuming some sort of “sweat of the brow” argument for patents: that hard work automatically deserves protection. But that’s not how the patent system works, and it’s good that the judge recognizes this.

The one point that the judge punted on was the Constitutional question — basically noting that the case didn’t even need to get that far, since it could be decided based on other issues. This is somewhat unfortunate, because the issues being raised by the ACLU are important ones for patents (and copyrights). As summarized by Joe Mullin in his post about the ruling:

The ACLU argued that genetic patents aren’t only banned under the patent laws, but that they violate the First Amendment because they prevent research and discussions with patients; and that they violate the so-called “Progress Clause” of the U.S. Constitution because patents like Myriad’s don’t “promote the progress” of science.

This is unfortunate because we’ve long argued that the Constitution makes it clear that if copyrights or patents do not, in fact, “promote the progress,” then they are not valid. This is an issue that gets ignored frequently, but it would be good to get addressed. Also, the First Amendment argument is another important one, as the courts have generally punted on cases where lawyers have brought up the conflicts between the First Amendment and copyright law. It would be interesting to see the issue approached from the patent side of the house as well.

In the meantime, while this is an important ruling, it really means very little until the appeal happens (not for a while, most likely), and CAFC weighs in. On that front, there may be some good news. I’d been meaning to write up a ruling from last week on CAFC which a few people submitted, invalidating a specific gene patent held by Harvard and MIT. If you look closely at that ruling you can get a sense of how CAFC is viewing these kinds of patents:

Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others. “[A] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.” Id. at 930 n.10 (quoting Brenner, 383 U.S. at 536). Requiring a written description of the invention limits patent protection to those who actually perform the difficult work of “invention”–that is, conceive of the complete and final invention with all its claimed limitations–and disclose the fruits of that effort to the public.

Thus, there’s a question of how CAFC will view Myriad’s BRCA patents. Will it see them as just a description of something found in nature, as the lower court did, or will it see them as a true invention.

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Comments on “More On The Gene Patent Ruling: What Happens Next”

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Andrew F (profile) says:

Sweat of the Brow

This is an issue I have trouble with — how do you reward sweat of the brow work? On one hand, allowing people to patent facts results in way too much abuse of the system. On the other hand, discovering things in nature can often be incredibly time-consuming and expensive. How do you reward or otherwise compensate that effort? What does CwF + RtB mean in the context of commercial research?

Dark Helmet (profile) says:

Re: Sweat of the Brow

I don’t understand the question. Why wouldn’t you allow the companies that can actually implement the discovery in a viable product, patentable or otherwise, ALSO incur the costs of the research, either directly conducting it themselves or paying others on a contractual basis to do so? THEY’RE the ones that stand to benefit monetarily, so let them fund the research.

Paying for sweat to the brow work doesn’t fly in capitalism.

Researcher: Holy mother fucking shit in a tin can!

Public: Er, what?

Researcher: I just discovered that Earth actually has a second fucking moon! Can you believe it?

Public: No way! That is absolutely amazing!

Researcher: I know! Gimmie some money!

Public: Wait…what? Money for what?

Researcher: My discovery. Do you have any idea how much work I had to do to find that second moon?

Public: Yeah that must have been tough, but what am I paying you for?

Researcher: I told you, my discovery. It’s mine.

Public: What’s yours?

Researcher: My discovery!

Public: You mean you own the second moon?

Researcher: No, of course not. That’d be silly. But I own it’s discovery!

Public: Uh, that doesn’t make any sense. You can keep your discovery. I don’t want it. I’d rather make use of the moon.

Researcher: (Dials Phone) Hello? Is this the Law Offices of Dewey Cheetham & Howe?

Andrew F (profile) says:

Re: Re: Sweat of the Brow

Think of sweat of the brow in terms of subsidizing competition. Also, assume in this scenario, the public is not subsidizing anything.

Suppose the market for a product is a billion dollars. I invest $250 million in research to discover the product. Assume it costs next to nothing to actually produce or copy the product once it’s discovered. That next to nothing means I’ll quickly get a large number of competitors, thereby killing any chance to get a return on my investment.

The problem isn’t that there’s competition. It’s that my very large investment in research is also subsidizing my competition. Depending on how that competition affects my future return, that’s going to limit the amount I’m willing to invest.

Anonymous Coward says:

Re: Sweat of the Brow

It depends on what you mean by “commercial research”. This is not commercial research, as in developments and innovations towards improving and creating commercial goods. This is scientific research devoted to understanding and improving knowledge.

CwF + RtB is a business model that is directed towards selling goods and services to buying individuals. You can’t just shove it onto any field and expect it to work.

At the same time, scientific research is not a field where discoveries means a massive paycheck. The “CwF”, if you want to call it that, is improving your relations with the people funding you. The “RtB” is the discoveries that you made, which encourages investment in your research in the form of corporate interests or government grants.

Research is not about making a discovery, then sitting back enjoying royalties and interest for the rest of your life. It’s just like any other full-time job. You get paid to work, when you’re successful you get better funding (and more personal income), but you still have to keep working.

In other words, you’re rewarded for your sweat while you work…just like most people.

Lonnie E. Holder says:

Had to jump in here...

This is a point that often seems to get lost in this debate, with patent system supporters assuming some sort of “sweat of the brow” argument for patents: that hard work automatically deserves protection. But that’s not how the patent system works, and it’s good that the judge recognizes this.

Broad brush stroke again…now corrected.

Patent system supporters DO NOT assume a “sweat of the brow” argument for patents. WRONG, WRONG, WRONG. Now, you may say that SOME patent system supporters have a “sweat of the brow” argument, but that does not make the argument correct.

The patent system was ALWAYS about awarding the teaching of novel inventions that provide a useful function. Just because you worked hard to get a result does not mean you deserve a patent, and has never meant that. I suspect the people who might argue the “sweat of the brow” are ignorant of the requirements of getting a patent.

Lonnie E. Holder says:

Re: Re: Had to jump in here...

There is a difference between getting the USPTO to issue a patent for whatever logic they had at the time and thinking you deserve a patent just because you worked hard. Though it may be somewhat transparent to some people, the USPTO criteria to obtain a patent is fairly rigid and demanding. When the USPTO fails to properly apply their criteria, they get slapped pretty hard by the courts – which seems to be happening a lot right now.

And Now ... says:

Re: Re: Re: Had to jump in here...

Someone put in a lot of work … obviously with huge research and development costs, not to mention the risks involved … all this in a selfless quest to bring to the world the much sought after …

US Patent 5443036 – Method of exercising a cat

A method for inducing cats to exercise consists of directing a beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.

Anonymous Coward says:

Re: Re: Re:2 Had to jump in here...

lol…Who would the inventor enforce the patent against? The examiner was asleep at the wheel. While exercising a cat “may” be a “useful” result, balls of string do the same thing. There is teaching, suggestion and motivation for this supposed “invention.”

Not to mention that cats, and dogs, were doing this with flashlights long before lasers came along.

Jose_X (profile) says:

Some of these arguments are so silly, and if it weren’t because of the money some are making from this system, they would recognize the inconsistencies and unfairness of the patent system as a whole.

There is almost no reason to grant a patent, that is, to grant a 20 year free-market competition destroying monopoly subsidy option, if the intent is, as the Constitution requires be true, to promote the progress.

Why are we giving a patent? It’s not for costs and tremendous insights apparently. It’s not to protect the little guy against the big guy imitator since patents are frequently used by large companies against other large companies and other small companies and individuals.

Since when is 1 head better than 1000 over a period of 20 years? Since when does the inventor awarded the patent perform anything but the last few drops of work on what is a long line of breakthroughs and insights [no man is an island]? Since when is the criteria of not being obvious (immediately) to an average contributor to the field a reason (along the lines of hoping to promote the progress) to ban the many for whom the invention is fairly obvious or would certainly be created in much less than 20 years?

Would you go watch an Olympic race if the only one of the runners that would be allowed to leave their starting blocks would be the first to have submitted their application for the race (or who had posted a qualifying time earliest in the year)? Of course not. The fans and the competition all suffer when you only allow one person to run a particular race. Worse if you then grant this monopoly for race after race after race over a long period of time.

And even worse, the one filling out the patent isn’t even likely the one that knows the most about that invention. Statistically this will be the case though we can actually see an example here where much of the hardest work will be done by those that will not be able to get a patent (and they rightfully as well shouldn’t). In fact, writing the more general description of an invention is a capability acquired earlier in time when you understand something less then it is to write a more detailed patent (of necessarily narrower scope), yet you are rewarded greater scope for the more general claims achievable earlier in time — and for 20 years, even if development/discovery/inventing is happening at a furious pace and by many at a time.

Stop a fury of progress and development if a jackal happens to have timed everything properly and cleverly adds a patent at the right moment in the right place? That is nonsense. Progress is severely hampered. It is true that writing up such a patent with great timing requires a lot of skill, but many things require a lot of skill. And in a free market, s/he with a lot of skill in something can usually earn a decent wage or get decent returns on investment. Monopoly not required unless you want to turn “decent” into “potentially grossly obscene” while having progress and liberties be restricted potentially a great bunch.

The government should always have to prove for every patent claim subsidy granted that the progress is promoted. Secondly, there should be many rules of thumb (or outright prohibitions) in order to accomplish the promotion of progress where essentially if there are a large number of potential inventors and contributors to the field or if innovation happens routinely, then patents are not awarded, period. Thirdly, it’s almost unheard of that the right to exclusivity and control for a full 20 years would promote anything except laziness, inefficiency, and bad businesses decisions/paths on the part of the monopolist once the patent was acquired (assuming they opted to enforce exclusivity).

Does a patent teach something? Well, given that adding the last bow to a particular Christmas tree decorative style creates a new invention, a better question is do we care to be taught that and do we want to surrender a 20 year monopoly to the “teacher”? Of course not, at least not in most cases, eg, where significant competition already exists and any blockade would affect negatively a great many others’ work.

What do teachers get paid nowadays per year? $100K, $50K, $200K, $0? What would a good manual fetch? $10K, $50K, $2K, $0? A 20 year monopoly subsidy grant is out of the question, even to an awesome teacher or teaching performance.

Oh, and the taught example always falls way short of a total product, at least in cases like software and most engineering where the possible reasonable variations in missing details are many and require much extra insight, skill, or work to do well.

[Software patents are particularly bad, mostly because of the way the likely negatives of patents are magnified. Software has a low bar to entry at all phases of the process implying low investment and also resulting in a very large number of inventors/creators.]

We do want to encourage innovation (when extra encouragement is needed) and protect risks (when these risks are competitive), but this is achievable in many ways without involving monopolies at all or certainly not long-term monopolies. Help those that achieve without binding the hands of those others that are also achieving. Something like a tax credit, prestige, a solid job offer in industry, a government or private institution prize money or grant, first mover advantages, a solid teaching offer, etc, are all likely more than sufficient for most cases and do minimal in any damage to the rest of society.

Anonymous Coward says:

No first amendment issues with patents...

“Also, the First Amendment argument is another important one, as the courts have generally punted on cases where lawyers have brought up the conflicts between the First Amendment and copyright law. It would be interesting to see the issue approached from the patent side of the house as well.”

To the best of my knowledge, until recently there has never been a first amendment issue with patents. If you think about it, this makes sense. Invariably, patent infringment is about making or using a product. There is no first amendment protection with respect to manufacturing products in your basement.

The ACLU challenged the Myriad patents on first amendment grounds, but I struggled to see how they would get anywhere. The patents do no prevent you from talking about the knowledge in their patents. Their argument seemed to be that the patents somehow blocked the free flow of information. Their challenge was to identify the “blocked” information, and I think the ACLU was hard pressed to define what information is “blocked” that would fall into the first amendment rights.

As convoluted as some distortions of patent law and other IP rights laws have been, convoluting the first amendment to intersect with patents seems a ridiculous absurdity.

In fact, in the recent Myriad decision, the court does not address first amendment issues at all, except in properly dismissing them (they did explain that in a case where there is applicable statutory law and a constitutional question, if the statutory law is appropriate it should be applied rather than dealing with a constitutional question) and properly elected to focus on statutory language of patentability, which was sufficient.

The only way I see to intersect patent law and the first amendment would be to attack the statutory law on first amendment grounds, which would be a very tough thing to do, and the plaintiffs in the Myriad case did not, focusing instead on the application of the statutory law.

Jose_X (profile) says:

Can you express yourself freely? That is the question.

[Anonymous Coward] >> The ACLU challenged the Myriad patents on first amendment grounds, but I struggled to see how they would get anywhere. The patents do no prevent you from talking about the knowledge in their patents.

For the sake of argument, I’ll first assume the First Amendment takes precedence over everything else. In that case, to protect the freedom of expression, you would have to allow any action at all.

Obviously, “any action at all” is not acceptable.

As an example, let’s assume software patents are possibly valid (at least in some cases). A take down notice asking to remove from an online server the work I do (software I write) along with others (who are similarly exercising our wish to express in that way) would violate the First. I want to write and I want to share. And in order to test the expressive aspects of such communication, I also need to compile the software and use it to a degree in order to make sure it meets certain qualities and properties. I should not be stopped from collaborating publicly and coding up a product along with others.

Now, (again, assuming software patents are legit) how much preference would the courts give to what I just described?

Keep in mind that when patents were created, they were not used or intended to attack individuals’ expressive or informational aspects of writing or other works. I still think this is the case today.

Keep in mind that one legitimate reason to want to code up a great application is to show that it is possible to do so through eg volunteers or through a small number of people or amateurs or through a low cost environment, etc. You might want to make a statement not just about creating something particular but about showing that it is possible to create that in some fashion and being of a certain high quality. Such a work/proof-of-concept could help set future directions in law (eg, to have software patents removed in a future legislative bill).

Similarly, those creating distros or any software can want to participate.

My guess is that a compromise (assuming software patents are valid) would be to allow certain or many types of uses by individuals but the more you moved into the commercial and/or corporate realm, the more such uses would likely be restricted unless you had a particular killer argument as to why you should be allowed.

Fortunately, software patents essentially don’t much come close at all to promoting the progress. Any reasonable and consistent interpretation of the “promote the progress” clause has to acknowledge that if the exclusivity in the law does not promote the progress under some reasonable criteria, then the law is unconstitutional. Congress can’t simply create what they want and then will into being this “promotion” by virtue of their desire that such be the case.

And as mentioned in an earlier comment, it seems unlikely that granting a long monopoly subsidy would promote anything unless the field is barren and were to remain as such even after the first X patents have been granted.

Also, I think the First Amendment, by virtue of amending the original Constitution after Article 8 was written, would take precedence (generally) should there be a conflict to a significant degree.

Anonymous Coward says:

There is almost no reason to grant a patent, that is, to grant a 20 year free-market competition destroying monopoly subsidy option

Actually, the USPTO were required to grant patents like those mentioned in the article by the legal battles in the ’90’s over mice used in cancer research. They didn’t want to allow these types of silly patents, but were forced to by the legal system.

I guess it is too much to expect bloggers like yourself to end the misinformation about the United States’ patent system as it is far easier to just call patents “competition crushing” and imply their “evil” nature than it is to dispel myths.

Jose_X (profile) says:

>> Actually, the USPTO were required to grant patents

I did not blame the USPTO as being renegade. They are a part of the government machinery implementing this broken set of laws.

>> I guess it is too much to expect bloggers like yourself to end the misinformation about the United States’ patent system as it is far easier to just call patents “competition crushing” and imply their “evil” nature than it is to dispel myths.]

I read your short comment, and I did not see a single point that contradicted what I said except that you don’t appear to like what I said.

The patent gives the inventor of record the backing to end all competition for 20 years, and this includes competition on inventions on top of that broadly described initial base invention. We are talking about ending possibly existing and future development on things not even imagined by the patent author because the scope of patents are quite broad (this is very noticeable with software as software is very complex by nature). That is what I mean by “competition crushing”.

I did not use the word “evil”.

More comments can be found here: .

Anonymous. says:

Gene patents.

2012.08.17 Appeal’s Court – can patent “isolated” human genes. So let me get this straight. Separating a part from a whole makes a part new and non-existant? Hello! To “isolate” smth. this smth. must exist in nature in the first place. Otherwise how can it be isolated if did not exist? I think gene patents are absurd.

So if I walk up to a tree (whole) snap a leaf (part) off of it – now I can patent a leaf? Isn’t it ridiculous?
Besides, how does “ownership” of my genes square against Amendment 13 – no slavery?

Anonymous Coward says:

Sweat of the brow.

Fuck the system that stands in the way of human progress. Modern US patent system = medieval Holy Inquisition.
In the old days a bunch of greedy assholes camouflaged themselves with religious agenda, nowadays a bunch of greedy assholes camouflage themselves with “scientific” agenda. In the old days they’ve burnt Giordano Bruno at the stake. Now they send cease-and-desist letters. Enough is enough!

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