Legal Commentary

After a brief diversion to rant about analyze the Bilski decision, I return now to the last post of my Everything is Patentable series.  I end this series of posts with one of the thorniest patentable subject matter questions ? products of nature, including DNA. 

Like other areas, precedent is not terribly useful.  Products of nature are not patentable, but determining what is a product of nature can be difficult.  The general rule is that materials that are ?isolated and purified? qualify while others do not.  Except, of course, for the person who was able to purify tungsten to the point where it was flexible (an important discovery for making light bulbs).  The court there ruled that he had not invented tungsten even though it did not exist in nature in the pure form that the inventor claimed.

DNA takes this point a step further ? detractors claim that ?someone can patent your DNA.?  These claims are patently false (pun intended).  DNA patents are about either purified gene sequences (turns out a lot of genes have non-functional segments) and artificial organisms in which DNA strands are combined with bacteria to artificially generate proteins.  Cool stuff, really, and critical to the biotech industry.

So, what?s the problem under rigorous patentability? 

It?s not a subject matter problem ? genes are obviously compositions of matter, and there is no principled basis to deciding what DNA patents to allow and what to bar with respect to worries about ?locking up? the genetic code.

Under rigorous patentability, the problem becomes obviousness. (There is also a novelty argument discussed in the paper, but it is too long and nuanced to reproduce here).  In the ?old days? of a few years ago, it was difficult and unpredictable to isolate a gene sequence.  It was also unheard of to splice a gene into a bacterium to artificially generate proteins and enzymes. 

Today, it is still costly to do so but it is no longer (in many cases) truly inventive work.  It is often a matter of using known processes, brute (computer) force, and time.  As a result, many DNA discoveries are simply obvious from a rigorous patentability standpoint.

The objection to this viewpoint is that these types of discoveries are very costly, and we want to incentivize them.  That may be so, but patent law is concerned with incentivizing the unknown, not merely the expensive.  There are all sorts of expensive manufacturing processes that are not protectable because they are not new and nonobvious.  If we want to encourage such spending, Congress must incentivize it in some other way ? either special patent rules (which was done with certain plant patents, for example), through tax breaks or other subsidies, through loans, or through licenses.  Just because we want something doesn?t make it patentable.  Furthermore allowing patents on obvious advances may very well disincentivize others from doing important work.

How best to handle this area of research is a difficult question, but it is not a question of subject matter.  Instead, the difficulties epitomize the problems with subject matter bars ? we never get to the difficult questions if we simply block all patents in an area.