By Pete Williams and Erin McClam|NBC News
The Supreme Court ruled unanimously Thursday that natural human genes cannot be patented by companies, but it said that synthetically produced genetic material can — a mixed ruling for the biotechnology industry.
A naturally occurring piece of DNA is “a product of nature and not patent eligible merely because it has been isolated,” the court said.
The case centered on a Salt Lake City company called Myriad Genetics that was granted patents for isolating two human genes, known as BRCA1 and BRCA2, that indicate a higher risk of breast and ovarian cancer. The company now markets tests for those genes.
BRCA1 is the gene carried by actress Angelina Jolie, who determined after a test that she was at higher risk of developing breast cancer and chose to have a double mastectomy.
The court said that Myriad had found something important and useful, but it ruled that “groundbreaking, innovative, or even brilliant discovery” does not by itself guarantee a patent.
The opinion was written by Justice Clarence Thomas.
Statement by Rose Law Group Intellectual Property attorney Rob Iussa:
“I think the Supreme Court got it all right. I don’t’ even think there was a compromise as the article suggests.
“Patents should not be granted to things that occur in nature, otherwise the public would be denied the use of things that an entity merely ‘finds.’ On the flip side, if a company can synthesize, manufacture, develop a system to extract, use such natural elements to produce a derivative product, then that is and should be patentable . . .which the court noted, but was not pursued by Myriad.
“I would have taken a completely different approach if I were Myriad’s counsel. I might have attempted to patent the genes themselves, knowing I would have to wrestle with the USPTO regarding an inevitable 101 rejection, but I would’ve hedged my bets with method claims, synthesis claims, etc.”
If you’d like to discuss intellectual property issues, contact Robert Iussa, chair Rose Law Group Intellectual Property Dept., riussa@roselawgroup.com rhurley@roselawgroup.com
