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
    Lonnie E. Holder, 30 Mar 2010 @ 2:41pm

    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.

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