Supreme Court Will Finally Say If Genes Are Patentable

from the can-they-punt-around-the-question? dept

Fri, Nov 30th 2012 2:45pm — Mike Masnick

This isn't a huge surprise, but after a long series of intermediary steps, the Supreme Court has finally agreed to weigh in on whether or not genes are patentable. For a bit of background on gene patents, back in 2010, a district court ruled in the Myriad Genetics case that gene patents were invalid, noting that they "are directed to a law of nature and were therefore improperly granted." A nice, clear and useful statement.

But, of course, it was just the first step in a long process. Myriad took the case to the appeals court for the federal circuit (CAFC), the notoriously patent friendly appeals court. The only surprise here was that the US Justice Department actually said it agreed that genes shouldn't be patentable (showing a potential disagreement within the administration, as the US Patent Office was not happy). End result? CAFC decided genes are patentable because they're "separate" from your DNA.

Then, before the Supreme Court could review that case, it ruled in a different case, the Prometheus v. Mayo case, involving medical diagnostics, which it ruled to be unpatentable subject matter. As expected, soon after that, the Supreme Court told CAFC to reconsider the gene patent case in light of its ruling in the medical diagnostics patents case. In August, CAFC said that it still believed genes were patentable.

And, of course, everyone fully expected this to end up before the Supreme Court again, which it will. Of interest, there were two questions appealed to the Supreme Court: (1) are human genes patentable and (2) did CAFC make a mistake in its application of the Myriad medical diagnostics patent ruling to this case -- but the Supreme Court has only agreed to review the first question: are human genes patentable? This is both good and bad. As we've seen all too often lately, the Supreme Court has bent over backwards to come up with ways to make very, very narrow rulings (see: Bilsky), effectively punting on the bigger questions, and leaving a ton of uncertainty in the market. By directly having just a single question over the patentability of genes on the table, hopefully it can issue a crisp and clear ruling (preferably rejecting those patents!)

The potential downside, though, is that if it does somehow find genes patentable, then it would mean that the CAFC ruling stands. Considering that we found the CAFC's reasoning troubling, this could be a larger problem. It would mean that CAFC can get away with dancing around the Myriad standard for rejecting patents, to leave in place potentially dangerous and ridiculous patents on elements of nature. This also means that we won't get a broader ruling on how to apply the Myriad standards, which actually might have been useful for rejecting software or business method patents. Either way, the most important thing at this stage is that the court outright reject gene patents.

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Filed Under: diagnostic patents, gene patents, patents, supreme court
Companies: myriad genetics

32 Comments

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slick8086, 30 Nov 2012 @ 2:52pm

why only human genes? What about animals and plants? What about human genes could objectively differentiate them with regards to patents.
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Trevor (profile), 30 Nov 2012 @ 2:56pm

Precedent
If the SC rules genes NOT patentable and follow the same reasoning as the lower court that it is from nature, it will be interesting to see if that will be used to defeat software patents, as the mathematical algorithms are part of the natural world...
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SilverBlade, 30 Nov 2012 @ 2:56pm

Many problems with this.
What happens if someone was born with a gene that was patented? Is that person the property of the patent owner? Are they then killed off because that child would pass down the gene to their kids - and he would be an 'unauthorized distributor' of the patent?

DNA and genes are not separate. They need the other. If the judge rules that genes are patentable, then our world is going to be fucked in the future.
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RickG3, 30 Nov 2012 @ 2:57pm

Response to: slick8086 on Nov 30th, 2012 @ 2:52pm
Humans aren't produced for profit.
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Anonymous Coward, 30 Nov 2012 @ 3:03pm

Re: Many problems with this.
Or rather, prevented from fucking
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Anonymous Coward, 30 Nov 2012 @ 3:06pm

If God created the heaven and the earth and all life on it then surely as God is the creator then God owns the patent to genes.
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cosmicrat, 30 Nov 2012 @ 3:07pm

Ironically
One of original litigants is named "Prometheus". Maybe we all owe royalties to some eight foot tall white skinned "engineers" and they're trying to collect in court!
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Trevor (profile), 30 Nov 2012 @ 3:09pm

Response to: Anonymous Coward on Nov 30th, 2012 @ 3:06pm
Wouldn't that be the most epic use of "prior art"? ;)
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Mason Wheeler (profile), 30 Nov 2012 @ 3:10pm

Rogue courts
CAFC seems to be as much a rogue court as that one in Texas that keeps handing down ridiculous patent rulings that keep getting overturned.

So I have to wonder, what procedures are available to rein in a rogue court? We've got checks and balances, prescribed methods to remove all sorts of abusive government officials from power. How do you get rid of the judges running a rogue court?
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Anonymous Coward, 30 Nov 2012 @ 3:23pm

Surely a gene is a discovery, like Makemake, or are astronomers able to patent astronomical bodies.
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Anonymous Coward, 30 Nov 2012 @ 3:24pm

Re: Many problems with this.
The patents in this case cover the isolated forms of the genes, not the "wild-type" genes.

Also, a patent only gives an exlusive right to make, use, sell, offer for sale, or import into the U.S. the covered invention.

The only potential item on that list relevant to a person born with the genes in question would be "use," but I don't think involuntary action (i.e. being born, cell division), can qualify.
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Anonymous Coward, 30 Nov 2012 @ 4:39pm

Re: Response to: slick8086 on Nov 30th, 2012 @ 2:52pm
Or so you think
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Jikap (profile), 30 Nov 2012 @ 4:40pm

Of course our children should play a license fee for infringing on our genes! Stealing is wrong, whether it's a DVD at the store or your parent's genes.

Parents need an incentive to procreate, and that incentive is the gene patents! You can hardly expect them to procreate for free? There wouldn't be any children without gene patents!
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Anonymous Coward, 30 Nov 2012 @ 4:41pm

Re: Response to: slick8086 on Nov 30th, 2012 @ 2:52pm
Or so you think
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Anonymous Coward, 30 Nov 2012 @ 4:41pm

Re: Re: Response to: slick8086 on Nov 30th, 2012 @ 2:52pm
Echo!

Echo!
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Zos (profile), 30 Nov 2012 @ 5:39pm

Re: Precedent
lmao, that's applying far to much logic to the problem. it'll never fly.
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Thomas (profile), 30 Nov 2012 @ 6:01pm

The Judges will decide..
based on how much stock they own in the genetics companies plus how much the companies offer them for a favorable ruling.
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Anonymous Coward, 30 Nov 2012 @ 6:12pm

Well we patent computer algorithms, why not algorithms found in nature?

What's the use in taking a big steaming dump over only SOME of the rules?
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Anonymous Coward, 30 Nov 2012 @ 6:16pm

Re: Re: Many problems with this.
The patents in this case cover the isolated forms of the genes, not the "wild-type" genes.

So how would you legally characterize between the two? Could a person lose the rights to their own genes?
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saulgoode (profile), 30 Nov 2012 @ 7:55pm

Errata
In the following sentence, "Mayo" should be substituted in place of "Myriad" (in the penultimate paragraph).

Of interest, there were two questions appealed to the Supreme Court: (1) are human genes patentable and (2) did CAFC make a mistake in its application of the Myriad medical diagnostics patent ruling to this case -- but the Supreme Court has only agreed to review the first question: are human genes patentable?
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Anonymous Coward, 1 Dec 2012 @ 2:12am

Re: Re: Many problems with this.
Involuntary action like natural wind pollination was deemed a patent violation in various Monsanto cases and farmers clearly have less control over wind pollination than humans have over reproduction.
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Gothenem (profile), 1 Dec 2012 @ 4:02am

Re:
Wow, I am an Athiest, but I would totally support this statement if it meant that Genes could not be patented.
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Anonymous, 1 Dec 2012 @ 5:18pm

And once again...
The supreme court can SUCK IT!
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Hephaestus (profile), 2 Dec 2012 @ 2:43am

Let me get this straight.
Finding something in nature, like a rock can be patented. Yeah that does not bode well for humanity.
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Brendan (profile), 2 Dec 2012 @ 10:15am

Re: Errata
I had the same thought. The error (I believe) repeats in the final paragraph. The CAFC will tapdance around Mayo, not Myriad.
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Anonymous Coward, 2 Dec 2012 @ 9:24pm

If it is patentable, then...
God should get the patent.
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Calvin (profile), 3 Dec 2012 @ 10:54am

Re: Re: Many problems with this.
So as a non-US citizen does that mean I can't enter the USA as I would be 'importing' genes covered by a patent?

I know that the US immigration control is using body-scanners but I didn't realise that they went to this level of detail.
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Anonymous Coward, 3 Dec 2012 @ 11:15am

Re: Re: Re: Many problems with this.
Well, you're presuming that someone has "rights" to their own genes in the first place. I'm not sure if that's true, or what it would mean.

The short answer, though, is that I don't think anyone is at risk of patent infringement for being born, living, or making babies that happen to have certain genes.
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Anonymous Coward, 3 Dec 2012 @ 11:19am

Re: Re: Re: Many problems with this.
I actually don't think that's true. I don't think any court has ever held involuntary pollination to be an infringing act.

This is obviously a biased source, but: http://monsantoblog.com/2012/08/30/the-myth-about-accidental-pollination/
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Anonymous Coward, 3 Dec 2012 @ 11:20am

Re: Re: Re: Many problems with this.
I believe that would only be the case if you are importing the isolated genes, not the genes as contained in your actual cellular DNA.
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Anonymous Coward, 3 Dec 2012 @ 11:20am

Re: Let me get this straight.
Nope. You've not got it straight.
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DAK, 6 Dec 2012 @ 10:43am

Re:
The genes we not stolen. Unless your sperm was stolen to create your children, you gave them your genes.
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