ABA IP Roundtables on Gene Patenting

The Intellectual Property Litigation Committee of the American Bar Association (ABA) Section of Litigation will be holding a number of luncheon roundtable discussions at various locations around the country to address the question:  "Are Genes Patentable?"  Roundtables have been scheduled on the following dates at the following locations:

• January 20, 2010 - Los Angeles & San Francisco
• January 21, 2010 - Birmingham, Boston, Philadelphia & Pittsburgh
• January 25, 2010 - Atlanta & Seattle
• January 28, 2010 - Memphis
• January 29, 2010 - Wilmington
• February 4, 2010 - Chicago
• Date to be determined - Houston, Minneapolis, Nashville, Palo Alto & Washington, DC

Patent Docs author Kevin Noonan will be moderating the Chicago roundtable.  The hosts and moderators for the other roundtables can be found here.  Information regarding the site, time, possibility of securing CLE credit, and whether lunch is being provided at each roundtable can also be obtained at the above link.  A 17-page program discussion outline for the roundtable can be obtained here.

Comments

[6]

From the discussion:

"The Myriad defendants point out that the patent claims do not cover human genes in the
body, just isolated DNA molecules. Isolated DNA, they argue, is different in kind from any
composition found in nature, and acquires new properties not shared by the gene in situ. The
isolated form can be used as various diagnostic tools, including as a probe, or as a primer in
sequencing DNA. Human genes in the body cannot be used in this manner."

I just thought that I'd point out that this is the same Rtarded (with a capital R) argument that software patenteers like to trot out. They state that the "unprogrammed" computer can't be USED in the same way the programmed computer can. Except there's always one little problem, the "unprogrammed" computer can be used in the exact same way as the CLAIMED device can be, you simply have to go on and USE the computer a little more in order to program it first. The little word "comprising" should explain the problem. The manner of USE that the product they are claiming can be used in simply comprises the steps they list (and probbly some others irl), and that same manner of use could also include additional programming steps etc. If they were to claim the machine such that they stated, in the claim, that the machine was immediately usable in x fashion without further programming then they might have an argument. But they never claim that. And thus they don't have an argument.

Analogously, human DNA can be USED in a manner (i.e. a method) in the exact same way as the isolated DNA can save you simply have some extra "purifying" steps where the isolated DNA is formed. Thus, as the people are claiming these things, the human DNA is just as usable as the isolated DNA is, it simply requires more steps, and there is, so far as I'm aware, nothing in the claim prohibiting such steps from being additionally encompassed within the USE to which it is being put.

In any event, the whole discussion about cDNA from the other day was illuminating but I'm still not sure if I'm 100% comfortable with the manner in which they are claiming the items. If they have to rely on non-arguments like the above, I'm even more wary.

That said, on the surface there certainly seems like there should be little problem in claiming some cDNA. On the other hand, the substantial precedents discussed in those 17 pages certainly paints a grim picture for such claims.

[6]

"Even if the case ultimately fails, it has been suggested that it can be used by opponents of
gene patenting to create or emphasize a negative image of biotech companies as money-hungry
monopolists using the patent system to reap a profit from the common man or woman, drive up
medical costs, and potentially even exclude the average patient from medical care. This form of
attack may be particularly dangerous for the biotech industry, given the current movement in
Congress towards healthcare access and reform, and the focus on the reduction of medical costs."

The real danger. Probably should have put that on the first page so bored readers don't miss it.

[Kevin E. Noonan]

Dear 6:

You illustrate nicely the difference between computer programming and biotechnology.

[Sean]

Are these seminars for anyone to attend, with or without a fee?

[Noise above Law]

Dear Kevin,

Please do not encourage 6. While you may think he makes a distinction, his argument is empty and vapid. He does not understand computer programming, so how can he illustrate nicely any difference?

His "little bit of additional programming" being claimed or not is immaterial to the fact and to the law. 6 has spun the same arguments at other blogs, but never has an answer that holds up to scrutiny. Ask him what he thinks Alappat (and even the Office's arguments in Bilski) have to say about his favorite "not-a-new-machine-when-programmed" theories. Do not accept his post without thinking about what he is actually saying.

[Noise above Law]

Kevin,

Understood. I will do my part to respect this site.

Trainwreck Free.

[Sean]

Went to the Seattle meeting. Ended with a few consensus and open questions:
1) If working on therapeutics, try and patent protein, not the gene. Stay away from DNA patents.
2) Myriad patents are too broad. Maybe cDNA is a good intermediate to patent. Myriad could reissue and narrow.
3) Where to draw the line of things existing in nature versus isolated/purified things - open question.
4) Keep claims narrow. People get greedy and ask for broad patents. Will come to bite them later.
5) Patents are temporary and the entire disclosure is out there, so may not be such a bad thing. But from the viewpoint of public policy, DNA patents are tricky.

It was good to have all these points talked about with a bunch of people. I will try and go to more of these meetings. Thanks.

[Dov Henis]

Wives May Patent Husbands?
RNA Or DNA Genes, Organisms, Should Not Be Patentable
Organisms Should Not Be Patentable

Key Cancer Patents Killed
http://www.the-scientist.com/blog/display/57265/

All organisms, regardless of size, natural or modified by humans, should not be patentable.

Otherwise where is the limit???

My wife of few years might yet apply to patent me...?!

Dov Henis
(Comments From The 22nd Century)
03.2010 Updated Life Manifest
http://www.the-scientist.com/community/posts/list/54.page#5065

[Kevin E. Noonan]

Dear Dov:

Don't worry about your wife - the 13th Amendment would prevent patenting of a human being.

Thanks for the comment.