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Archive for June, 2013

UNL expert alert: Supreme Court rules that human genes can’t be patented

Thursday, June 13th, 2013

In a unanimous decision Thursday, the U.S. Supreme Court ruled that human genes can’t be patented, a ruling with both immediate benefits for some breast and ovarian cancer patients and long-lasting repercussions for biotech research.

The decision represents a victory for cancer patients, researchers and geneticists who claimed that a single company’s patent raised costs, restricted research and sometimes forced women to have breasts or ovaries removed without sufficient facts or second opinions.

But the court held out a lifeline to Myriad Genetics, the company with an exclusive patent on the isolated form of genes that can foretell an increased genetic risk of cancer. The justices said it can patent a type of synthesized DNA that goes beyond extracting the genes from the body.

A. Christal Sheppard, an assistant professor at the University of Nebraska College of Law, is a nationally recognized expert in patent and copyright law. She’s also a scientist, which gives her a unique perspective on the Myriad case.

She offers her informed opinion on the court’s ruling:

The public thinks the Myriad Supreme Court case is a win, but it is not. It’s a Band Aid on a cancer – not even close to ‘isolating’ the heart of the problem. The commercial value that the company is protecting and the public is objecting to is independent of the patent over the gene.

Synthetic genes representing the same information as the naturally occurring genes are still ownable. Naturally occurring versus synthetic is a ridiculous outdated distinction. The commercial value in the testing is independent of the patent over the gene.

The two major decisions from the courts about what should be eligible for patent ownership that have issued in the less than 35 days make nothing clearer – both only throw in more uncertainty.

It is long past time for Congress to step in and stop allowing the courts to determine public policy of what can be patented. Even the Court believes this. They stated “Concerns about reliance interests … are better directed to Congress.

Congress has not made a positive statement since the 1952 patent act on what should be eligible for the monopoly. Business is unhappy.  The public is unhappy.  But not in the ‘we’ve struck the right balance’ kind of way.

There is a better way for the court to have determined that genes are not patentable. Quite simply, genes aren’t new.  The law requires an invention to be new for it to be patented.   This is not a matter of what should be patentable but what meet the statutory requirements occurring to Congress since 1787 that require an ‘invention not be known before or used.’ ”

Reach A. Christal Sheppard, UNL assistant professor of law, at 402-472-1250 or asheppard3@unl.edu.

Sheppard