Maintaining Competition in Copying: Narrowing the Scope of Gene Patents

Abstract

In supporting gene patents, the patent office, the courts and other supporters have assumed that gene discoveries are identical to traditional inventions and therefore the patent system should treat them as identical. In other words, they have assumed that the relatively broad claims that are used for traditional inventions are also appropriate for encouraging gene discovery. This article examines this assumption and finds that gene discoveries are critically different from traditional inventions and concludes that the patent system cannot treat them as identical.

As a doctrinal matter, this article applies the generally overlooked constitutional requirements of inventorship and originality and concludes that broad claims to gene discoveries cannot be supported because gene discoveries are essentially copied from nature and thus relatively unoriginal. As a policy matter, the article finds that broad gene patents are also a demonstrably worse bargain for society. Broad gene patents run contrary to patent law's own drive to encourage desirable forms of competition.

Having addressed the policy and doctrinal problems with broad gene patents, the article proposes not invalidating gene patents per se but rather narrowing their claim scope. The article proposes a narrower model claim to realign gene patenting with patent law's doctrinal and policy foundations. Following copyright's treatment of low authorship works like maps and charts, the model claim narrows claims in low inventorship works like gene discovery. The model claim protects the initial gene discovery against outright piracy but it is narrow enough to allow for independent creation, and thus competition, from later arriving discoverers.

Keywords: patent law, originality, gene patent, DNA, gene, biotechnology, copyright, maps