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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Filed Under: gene, patents


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  1. identicon
    Jose_X, 31 Mar 2010 @ 4:31am

    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.

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