Patenting Genes and Genetic Methods: What’s at Stake?

Journal of Business & Technology Law, Vol. 6, p. 1, 2010

The Pennsylvania State University Legal Studies Research Paper No. 4-2011

35 Pages Posted: 25 Jan 2011 Last revised: 6 Feb 2014

See all articles by Eileen M. Kane

Eileen M. Kane

Pennsylvania State University, Penn State Law

Date Written: January 25, 2011

Abstract

The emergence of genetic medicine following decades of molecular biology research has been accompanied by the procurement of patent rights to many medically significant genes and methods for their use. The intellectual force of reductionism in the life sciences – to explain biological phenomena with molecular precision – generates direct conflicts with patent law’s exclusion of basic knowledge from patenting: laws of nature, natural phenomena, and abstract ideas must remain in the public domain.

This is a period of renewed attention to the issue of patentable subject matter in the life sciences, with a particular focus on genetic patenting. Patents have been obtained for the gene as an isolated DNA molecule, and for methods that rely on the assessment of genetic status to determine medical risk. It is only recently that a direct legal challenge to the patent eligibility of a gene as an isolated DNA molecule was undertaken, in the case of Association for Molecular Pathology v. United States Patent and Trademark Office. Recent developments in the patent eligibility of method claims for biochemical assays, including genetic tests, have emerged in such cases as LabCorp v. Metabolite, Prometheus v. Mayo, and Association for Molecular Pathology v. United States Patent and Trademark Office.

The article will outline the current legal frameworks for judging whether genetic-related inventions are patentable subject matter and identify the analytic choices available to the courts to decide the patent eligibility question for composition claims to genes and process claims to methods for genetic analysis. A central challenge to the eligibility question for genes is whether the courts should utilize a general or specific patentable subject matter theory for DNA; the choice will determine whether a decision has implications for general patenting in biotechnology. A central challenge to the analysis of life science method claims arises from the fact that the dominant analytic tests have been derived from the business method patent controversies, and illustrates how the technological neutrality of patent law causes doctrines that originate from one technical field to influence judicial review in an unrelated field.

Further resolution of the eligibility controversies in genetic patenting has larger theoretical implications. The life sciences await a definitive and modern interpretation of the product of nature doctrine and its scope, and a contemporaneous analysis of whether and how correlations in the life sciences are defined as natural phenomena or laws of nature. The resolution of eligibility for genes has implications for the patenting of other biomolecules, while the resolution of the eligibility of genetic testing methods has implications for the contours of the preemption analysis as applied to subject matter in the life and physical sciences, including such scientific sectors as nanotechnology.

The appellate courts confront an opportunity to update the set of “basic tools” for genetic science, and to settle these eligibility controversies for the benefit of scientists, medical practitioners, and patients who wish to use isolated genes and genetic correlations in research and medical care. As the courts enforce inventive precision through the proper application of 35 U.S.C. § 101, creative applications of fundamental knowledge will emerge and legitimately solicit legal protection, while the intellectual foundations of genetic science remain accessible. It should be possible to reconcile the prohibitions on patenting laws of nature, natural phenomena, and abstract ideas with careful patenting practices that advance the application of genetics to medicine.

Keywords: patent, gene, patentable subject matter, eligibility, life sciences, genetic test, BRCA1, DNA, biotechnology

Suggested Citation

Kane, Eileen M., Patenting Genes and Genetic Methods: What’s at Stake? (January 25, 2011). Journal of Business & Technology Law, Vol. 6, p. 1, 2010 ; The Pennsylvania State University Legal Studies Research Paper No. 4-2011. Available at SSRN: https://ssrn.com/abstract=1747191

Eileen M. Kane (Contact Author)

Pennsylvania State University, Penn State Law ( email )

Lewis Katz Building
University Park, PA 16802
United States

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