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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

Fri, Feb 13th 2015 3:44pm — Mike Masnick

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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Filed Under: cafc, gene patents, patents, supreme court, uspto
Companies: myriad genetics

14 Comments

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CanadianByChoice (profile), 13 Feb 2015 @ 4:46pm

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.
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Anonymous Coward, 13 Feb 2015 @ 4:55pm

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.
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Anonymous Coward, 13 Feb 2015 @ 4:56pm

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
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Anonymous Coward, 13 Feb 2015 @ 4:59pm

Why dont we as a collective patent govrnment........and solve our world issues tomorow by suing their asses into oblivion
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Anonymous Coward, 13 Feb 2015 @ 5:19pm

Re: Re: I can see the headlines now
They are trying to patent a discovery, not an invention.

They were trying to patent an idea, testing for the risk of breast cancer, once they had a viable test. They tried to achieve this by patenting the genes, rather than the test.
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Anonymous Coward, 13 Feb 2015 @ 5:48pm

Just sue their ass off
After all, if a company patents a gene, and people are getting sick and dying from it. Then they should be held accountable for killing people with their patented invention.
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Anonymous Coward, 14 Feb 2015 @ 11:25am

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.
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Blackfiredragon13 (profile), 14 Feb 2015 @ 1:35pm

Makes me wonder....
If the patent system today had been back then, would Isaac Newton have patented Gravity and the laws of physics?
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nasch (profile), 15 Feb 2015 @ 10:28am

USPTO
The Patent Office seems intent on screwing up the patent system in every way possible, and only the courts are in their way.
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That One Guy (profile), 15 Feb 2015 @ 10:36am

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.
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That One Guy (profile), 15 Feb 2015 @ 10:38am

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'?
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nasch (profile), 15 Feb 2015 @ 10:47am

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.
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Anonymous Coward, 15 Feb 2015 @ 11:45am

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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nasch (profile), 15 Feb 2015 @ 2:25pm

Re: Re: Re: Re: USPTO
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.

I agree, those are both problems.
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