Myriad Genetics Finally Gives Up Its Gene Patent Fight… Just As The Patent Office Opens The Doors Up To More Gene Patents

from the some-good,-some-bad dept

For many years, we’ve been covering the story of Myriad Genetics, the biotech company that has a test for the BRCA1 and BRCA2 genes (often an indicator of a higher risk for breast cancer). The company argued that because of its patent on those genes, no one else could test for those genes. Back in 2013, the Supreme Court did the right thing and finally rejected the concept of gene patents, despite years of the USPTO granting such patents. As the court noted, allowing gene patents created a perverse situation in which a single company could have the exclusive right to isolate a person’s own genes — and that’s just not right.

But Myriad Genetics did not give up easily. Just a month after the Supreme Court ruling it sued a bunch of competitors over a different set of gene patents, insisting that the Supreme Court had really only struck down the two in question. Those lawsuits did not go well, as Myriad lost again and again. At this point, it’s only choice was to go back to the Supreme Court, where it was obviously going to get a pretty big smackdown — so Myriad has now admitted that it will not pursue an appeal effectively ending this latest round of cases (after costing those other testing centers tons of money to defend themselves).

As the ACLU notes, this news is great, but there’s also some bad news. Just as Myriad is finally coming to terms with what the Supreme Court actually said a year and a half ago, the US Patent and Trademark is quietly opening the door back up to gene patents:

In response to severe criticism by industry groups, patentholders, and patent attorneys, the Patent Office issued new guidance in December that watered down the standard for determining whether something is an unpatentable product of nature. It said that differences in structure or function could allow companies to patent things based in nature. Under this test, if a surgeon removed a kidney from one’s body in order to transplant it, the surgeon could argue that she should be able to patent it because it no longer has the same structure as in the body since its blood vessels were cut. The kidney, of course, would be intended to function just as it has prior to being removed in the body that receives it.

The Supreme Court has long rejected this view. For example, in 1931 the court said that a fruit treated with a preservative in its rind could not be patented, because while it has a different structure, its uses are still the same ? to be eaten. The applicant could have sought a patent on a new preservative it developed, but not on the fruit itself.

In other words, the ugly head of gene patents may be about to come back alive, despite the Supreme Court killing it off a couple years ago. However, there’s still a chance the USPTO will reconsider:

The public has an opportunity to weigh in on this latest guidance. The Patent Office is seeking comments until March 16. In its next revision of the guidance, the Patent Office must require differences in both structure and function when assessing patent applications. Otherwise, the public will bear the consequences when another company, like Myriad, wields its exclusive rights on nature to stall medical and scientific advancement.

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Companies: myriad genetics

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Comments on “Myriad Genetics Finally Gives Up Its Gene Patent Fight… Just As The Patent Office Opens The Doors Up To More Gene Patents”

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14 Comments
CanadianByChoice (profile) says:

I can see the headlines now

“Biotech company patent genes found in donated sample, then sue doner for patent violation”

In “discovering” genes, the biotech company did nothing to develop them, so why should they be able to patent them? Tests and procedures? OK .. but not, under any circumstances, naturally occuring genes from anything.

Anonymous Coward says:

Re: I can see the headlines now

They say “We don’t patent the gene as it exists in the body, we patent it as it exists after it’s cut out of the DNA.” So then nobody else can test for the gene since the test involves cutting it out of the DNA. At least that’s how I understand it.

So they at least can’t sue you for infringement. But it’s still stupid. They are trying to patent a discovery, not an invention.

Anonymous Coward says:

What their asking for is essentially a monopoly to be the only ones protected by law to use a thing, often that which is bought, so more money equals more right sic…….a willfull action to impede progress that others might come up with, sooner or worse still may be the only ones to ever come up with and never seen due to patents

Patents is a profit law more then it is a progress law……..as there is a transfer of wealth, i’d say this can be seen as a transfer of power…….positioning oneself to be the only provider……….i do think thatinovators should get something, but in no way do i put that above the benefit of humanity……….i’d rather be without, then adopt a system that benefits the few

Anonymous Coward says:

Re: Just sue their ass off

This is actually an interesting point.
1) Patents are for novel inventions
2) Company X has a patent on gene R that’s killing people when it is expressed.
3) Since company X is claiming to have invented gene R (otherwise there’s no patent), they must be held liable for any misuse of that gene, such as when killing people.

Of course, that falls apart because they’re only claiming patent on how they’ve reshaped the gene by isolating it from other biological material. By definition, that means they’re claiming the patent on a gene that is no longer capable of being expressed by the host.

But they really should be patenting the process not the biological material itself.

That One Guy (profile) says:

Re: Hyperbolic, but not by much

If the patent and copyright systems we have today had been in place throughout history, we’d still be banging rocks together to pass the time, with someone making threats for stealing ‘their’ rock-banging music, and another group grunting(because someone would have the rights to words) and threatening everyone with sticks for trying to make fire using their methods.

nasch (profile) says:

Re: Re: USPTO

Wasn’t it just a short while ago when a quote was brought up, about how groups will always strive to keep in place the problem to which they have set themselves as the ‘solution’?

Yes, in that case it was about the MPAA and similar organizations. I’m not sure that’s what’s going on here though. I doubt the patent office sees any real risk of the patent system going away and thus them becoming obsolete.

Anonymous Coward says:

Re: Re: Re: USPTO

I doubt the patent office sees any real risk of the patent system going away and thus them becoming obsolete.

True,but like all bureaucracies, they wish to build their power, and that means enabling more patents to be granted. Also, politicians use the number of patents granted as a measure of innovation in the economy, which again creates pressure to grant more patents.

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