Wired and GenomeWeb (subscription only) have a bit of reporting on arguments in a case that will probably substantially affect patents on genes. The case is Association of Molecular Pathology , et al. v. US Patent and Trademark Office, otherwise known as "the BRCA1 case", which seeks to overturn a patent held by Myriad Genetics on a genetic sequence correlated with breast cancer.
Here is a brief summary of what follows: I have never understood how naturally occurring genes can be patentable, but at present patents are the only way to stake out a property right on genes that are hacked or, dare I say it, "engineered". So until IP law is changed to allow some other form of protection on genes, patents are it.
The ACLU is requesting a summary judgment that the patent in question be overturned without a trial. Success in that endeavor would have immediate and enormous effect on the biotech industry as a whole, and I doubt the ACLU is going to get that in one go. (Here is the relevant recent ACLU press release.)
However, the lawsuit explicitly addresses the broader question of whether any patents should have been granted in the first place on human genes. This gets at the important question of whether isolating and purifying a bit of natural DNA counts as an invention. Myriad is arguing that moving DNA out of the human genome and into a plasmid vector counts as sufficient innovation. This has been at the core of arguments supporting patents on naturally occurring genes for decades, and it has never made sense to me for several reasons. First, changing the context of a naturally occurring substance does not constitute an invention -- purifying oxygen and putting it in a bottle would never be patentable. US case law is very clear on this matter. Second, moving the gene to a new context in a plasmid or putting into a cell line for expression and culturing doesn't change its function. In fact, the whole point of the exercise would be to maintain the function of the gene for study, which is sort of the opposite of invention. Nonetheless, Myriad wants to maintain its monopoly. But their arguments just aren't that strong.
GenomeWeb reports that defense attorney Brian Poissant, argued that "'women would not even know they had BRCA gene if it weren't discovered'under a system that incentivizes patents." This is, frankly, and with all due respect, a manifestly stupid argument. Mr. Poissant is suggesting that all of science and technology would stop without the incentive of patents. Given that most research doesn't result in a patent, and given that most patent application are rejected, Mr. Poissant's argument is on its face inconsistent with reality. He might have tried to argue more narrowly that developing a working diagnostic assays requires a guarantee on investment through the possession of the monopoly granted by a patent. But he didn't do that. To be sure, the assertion that the particular gene under debate in this case would have gone undiscovered without patents is an untestable hypothesis. But does Mr. Poissant really want the judge to believe that scientists around the world would have let investigation into that gene and disease lie fallow without the possibility of a patent? As I suggested above, it just isn't a strong argument. But we can grind it further into the dust.
Mr. Poissant also argued "that if a ruling were as broadly applied here as the ACLU would like then it could 'undermine the entire biotechnology sector.'" This is, at best, an aggressive over generalization. As I have described several times over the past couple of years (here and here, for starters), even drugs are only a small part of the revenues from genetically modified systems. Without digging into the undoubtedly messy details, a quick troll of Google suggests that molecular diagnostics as a whole generate only $3-4 billion a year, and at a guess DNA tests are probably a good deal less than half of this. But more importantly, of the nearly ~2% of US GDP (~$220-250 billion) presently derived from biological technologies, the vast majority are from drugs, plants, or bacteria that have been hacked with genes that themselves are hacked. That is, both the genes and the host organisms have been altered in a way that is demonstrably dependent on human ingenuity. What all this means is that only a relatively small fraction of "the entire biotechnology sector" is related to naturally occurring genes in the first place.
I perused some of the court filings (via the Wired article), and the defense needs to up its game. Perhaps they think the weight of precedent is on their side. I would not be as confident as they are.
But neither is the plaintiff putting its best foot forward. Even though I like the analysis made comparing DNA patents to attempts to patent fresh fruit, it is unclear to me that the ACLU is being sufficiently careful with both its logic and its verbiage. In the press release, ACLU attorey Chris Hansen is quoted as saying "Allowing patents on genetic material imposes real and severe limits on scientific research, learning and the free flow of information." GenomeWeb further quotes the ACLU's Hansen as saying "Patenting human genes is like patenting e=mc2, blood, or air."
As described above, I agree that patenting naturally occurring genes doesn't make a lot of sense. But we need some sort of property right as an incentive for innovators. Why should I invest in developing a new biological technology, relying on DNA sequences that have never occurred in nature, if anybody can make off with the sequence (and revenues)? As it happens, I am not a big fan of patents -- they cost too damn much. At present, the patent we are pursuing at Biodesic is costing about ten times as much as the capital cost of developing the actual product. Fees paid to lawyers account for 90% of that. If it were realistically possible to engage the patent office without a lawyer, then the filing fees would be about the same as the capital cost of development, which seems much more reasonable to me.
I go into these issues at length in the book. Unfortunately, without Congressional action, there doesn't seem to be much hope for improvement. And, of course, the direction of any Congressional action will be dominated by large corporations and lawyers. So much for the little guy.