Ms Abidi brings some balance to the debate surrounding genetic patents when she points out that a genetic patent does not grant anyone "ownership" of any person's genes. However, she places herself firmly on one side of the debate in stating that isolated genes are not inventions, but discoveries, and "there is a moral case against patenting them."
We suspect that colloquial use of the term "invention", evoking brilliant individuals of insight and ingenuity, is not always consistent with the meaning of the term within patent law. Ms Abidi calls the recent New York ruling, in which cancer gene patents were found invalid as "products of nature", a "good decision". Yet US patent legislation expressly provides that things we might ordinarily regard as "discoveries" can, in appropriate circumstances, qualify as patentable inventions (35 USC 101 - "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title").
As we have previously reported, the District Court decision is now under appeal.
For a "discovery" to be patentable, the law requires that there be a useful application of the discovery, and that the discovery or use was not obvious beforehand. "Obviousness" may not be exactly opposite to the colloquial concept of "invention". These concepts of usefulness and obviousness are not new, or limited to genes. Many chemicals, including pharmaceuticals, turn out to be naturally occurring, and yet in most cases the corresponding patents are relatively uncontroversial.
The moral dimension is not unimportant, but is difficult to judge without all the facts. Moral questions exist in relation to genetic technology more generally, not in genes being "discovered" rather than "invented", which is nothing new to patent law.
An Australian Senate Committee is currently conducting an enquiry into gene patents (see previous reports here and here). Having extended its time to report, we hope that the Committee will reach a balanced view clarifying the moral issues.
Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
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