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 @ 4:36pm

    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.

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