Intellecual Property Rights and High Quality Genetic Testing

Abstract:     
Over the last years, the patenting of genetic tests sparked significant interest worldwide. Newspapers commented on patent cases and, quite often, portrayed patents as a negative story. The commotion surrounding the current patent framework for genetic testing is hardly surprising. Although patents on human genes and diagnostics are not novel, patents on genes for diagnostics are indeed a rather special combination. And although licensing has become daily routine in genetics to gain access to patented technology, the emergence of patent clusters and the restrictive licensing behaviour of some patent proprietors has been experienced as quite disturbing.

In an attempt to provide a better understanding of the contentious patent issues at stake in genetic testing, the present contribution first surveys the current legal framework for patenting genetic tests, thus sketching the patent regime from a patent holder’s perspective. The paper then examines strategies to gain freedom to operate in the genetic field, thus zooming in on the patent landscape from a patent user’s perspective.

Generally speaking, genetic testing relates to identifying changes in chromosomes, genes, or proteins to find changes that are associated with inherited disorders. More narrowly, medical genetic testing aims at probing genetic material for disease associated geno or karyotypes (medical applications of cytogenetics, DNA & biochemical tests). The present contribution focuses, even more specifically, on medical genetic DNA/RNA testing, and reviews patent and licensing issues related to genes and diagnostic methods and tools from an international and European perspective, illustrated with a concrete, real life example, namely the well known BRCA-case dealing with diagnostic testing for early onset breast and ovarian cancer based on the genes BRCA1 and BRCA2.

The paper concludes that the impasses identified and the criticism voiced is not always directed to the existence of the patent system as such, but rather to some excesses in the exercise of patent rights and the unrestrained behaviour of individual patent owners, in an effort to maximize profit.

It is hoped that the new compulsory license for public health will address undesirable effects and unreasonable behaviour from patent holders in an adequate manner, thanks to its preventive and dissuading effect towards patent holders applying (extremely) restrictive licensing policies. It is also to be expected that new models of collaborative licensing may contribute to facilitating access to genetic testing when clusters of patents are rendering access to genetic testing technology too complex and uncertain.

Number of Pages in PDF File: 8

Keywords: Gene Patents, DNA Sequence Claims, Diagnostic Method Claims, Patent Thickets, Blocking Patents, Refusal to License, Facilitating Access to Patents, Research Exemption, Patent Pools, Clearing Houses, Compulsory Licenses, Breast Cancer, BRCA, Myriad Genetics

JEL Classification: D23, D45, H 41, H51, I18, K11, L14, L 65, O31, O32, O34

Accepted Paper Series