Law prof explains impact of Supreme Court DNA decision
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A University of Iowa law professor believes Thursday’s ruling by the United States Supreme Court that determined that isolated versions of naturally occurring genes cannot be patented will have little impact on Iowa’s agribusiness industry.
The court, in the case Association for Molecular Pathology v. Myriad, ruled that isolated DNA cannot be patented by researchers who find new uses for it because it’s simply a portion of a DNA strand found in nature. However, modified DNA created in the lab can be patented because it is, for all practical purposes, a new invention.
Jason Rantanen, a UI law professor and patent law expert, says the ruling means researchers will have some additional freedom to engage in wide-ranging research because they won’t have to deal with a multitude of patents on genetic sequence as it occurs in nature. However, it is unlikely to significantly impact the incentive to develop new biotechnology inventions.
“For most practical applications, the court's holding means that even though the broadest possible biotechnology product claims to the isolated DNA itself aren't going to be patentable, the key elements in making a biotechnology-based invention are still going to be protectable via patents,” says Rantanen.
However, he says the decision might make some researchers less inclined to share early stage research that uses isolated DNA because it is nonpatentable.
some of whom may be less likely to share
He says the decision was widely expected by court observers, who thought the justices would find a middle ground and determine the minor differences between naturally occurring DNA and isolated DNA are not so great that it makes something new enough to patent.
He says the decision will likely not have much impact on the agribusiness industry, in large part because so much agricultural biotech research uses highly modified DNA sequences the are even further removed from the synthetic copies of natural DNA that the court held are eligible for patent protection. Nor does the decision modify the court’s decision last month protecting Monsanto’s patent on its RoundUp Ready genetically modified soybean seeds, a case that addressed a completely different legal issue, Rantanen says.
At issue in the Myriad case was a Utah company that had obtained patents on two human genes that, when mutated, could lead to breast and ovarian cancer. The plaintiffs in the case argued that such a claim had a chilling effect on medical research that could find cures for cancer. The opinion found both for and against Myriad, concluding that the genes did not become patentable simply by being isolated from the surrounding genetic material but did become patentable when synthetic copies were made that removed interior portions of the sequence as it occurred in nature, thus creating an artificial molecule.
Additional analysis by Rantanen can be found on the blog Patently O, at www.patentlyo.com/patent/2013/06/myriad-isolated-dna-out-cdna-in.html.