Pearl Sammett. Canada. National Film Board of Canada. Photothèque. Library and Archives Canada

I Got Myriad Problems and Patents Are One

by Joshua Auriemma on February 12, 2013

Association for Molecular Pathology v. Myriad Genetics, Inc. is a case with a long and storied history in the federal courts. For our purposes, the only thing you really need to know is that the Supreme Court is set to hear oral arguments on April 15 to [hopefully] determine whether human genes are patentable.

SCOTUSblog had a symposium on this case, which goes into much better detail than I ever could about the specific issues the Court will need to address to determine whether these patents are valid (hint: most I’ve seen suggest that the Court will find that human genes are not patentable), but I am mostly interested in thinking about this from a policy perspective.

I am fairly conservative in my patent views. I don’t like business method or software patents as a general rule because I don’t think they usually serve the purposes intended by the Constitution or the Patent Act. Let’s review Introduction to Patent Law quickly:

“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

U.S. Const. art. I, § 8, cl. 8. The overarching idea here is that you, brilliant inventor of this invention that would be difficult to reproduce if you didn’t tell us how you made it, tell us exactly how to make it in return for a government-sanctioned monopoly for a limited term of years. The far-off secondary purpose — and indisputably the more prominent in recent history — is akin to the motives of the Copyright Act; inventors should have some incentive to invent or they won’t invent. The latter purpose necessarily envisions an inventor that can’t make money from her invention without the assistance of a monopoly. Arguably, the former envisions someone who could make money, but would make more with the assistance of a monopoly.

In the 21st Century, inventions are only as good as the company making them. Look at Lytro, for instance. Ren Ng, at the time a Stanford PhD student, designed a camera as part of his dissertation that does not need to focus before snapping a picture, and images can be focused after the picture is taken in post-processing. That’s a billion-dollar idea if I’ve ever heard one. The result from the consumer standpoint is an ugly, awkward camera with very limited functionality. In the better funded and more experienced hands of Apple or Samsung, this technology could be (as Steve liked to say) revolutionary. So do we say that because those companies could fairly easily reverse engineer the Lytro camera the mechanism doesn’t deserve government protections? Not really, because we essentially fall back to the [possibly fictional] idea that Ng wouldn’t have invented this camera in the first place if he wasn’t going to be given patent protection. Personally, I’d argue that the creation of his company to market the product is evidence that he would have invented it irrespective of patent rights, but I digress.

If we decide that genes are not patentable, which I think is the correct finding in a perfect world (on that point I’m in total agreement with my Patents & Biotech Law Prof., Dr. Eileen Kane, who filed the most recent amicus brief in support of the Petitioner), I am concerned that private investors will run away and effectively stall out (or at least set back) the incredible progress of gene research. I have looked through eight of the amicus briefs and seen no mention of this issue, which is somewhat surprising. If the Petitioners can pull out the numbers and show that withdrawal of a large chunk of private funding won’t severely hurt genetic research, then I think I’ll be satisfied.

What do you think? Should non-synthetic genes be patentable?