DNA Patent Ruling

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The United States Supreme Court ruled last week that companies cannot patent naturally occurring DNA, but can patent synthetic DNA. Gary Marchant of the Arizona State University College of Law. will talk about the ruling.

Ted Simons: The United States Supreme Court ruled last week that naturally occurring DNA cannot be patented. What does the ruling mean to bioscience research and industry? We ask Gary Marchant of ASU's O'Connor college of law, Marchant is also an ASU professor of life sciences. Good to have you here.

Gary Marchant: Thanks.

Ted Simons: What did the Supreme Court's patenting human genes, what are we talking about here?

Gary Marchant: A lot of people are surprised to know about a 20% of the genes are patented. There is 4,000 with patents on them. They don't apply as they exist but to say if you take them out and use them, they need a patent.

Ted Simons: The court is saying that you cannot patent something like this that is naturally occurring?

Gary Marchant: Right, so the whole issue is that the Gene occurs in your body and, and taking it out and isolating it, is that enough to get a patent on it? For 20 years, we've been giving these for these genes, and now, the Supreme Court is now definitively saying no, you cannot get a patent.

Ted Simons: So it's like patenting a kidney?

Gary Marchant: Yes, but isolated. One of my students made the analogy if you cut off a bunch of thumbs and put it in a basket, can you patent it? That's the logic used here, but the problem is we have 100 years of inconsistent precedent on, this and some saying if you isolate a vitamin, that is patentable, and others saying that it is not.

Ted Simons: I would keep an eye on that student, by the way.

Gary Marchant: Right.

Ted Simons: And what were the court's reasons? Just because it occurs in nature and it does not really belong to, to, to anyone?

Gary Marchant: The company involved, they put money into it and invested research and time but did not invent anything new. That's what the court concluded, and to get a patent it has to be something new and novel that does not exist before. It has to be human made, essentially.

Gary Marchant: The rules have change, but I think that, you know, that's where we're at.

Ted Simons: What becomes of these companies, what becomes of the patents?

Gary Marchant: There is still some issues still out there because the court, at the same time, says, patents that include just the important parts of the Gene are still valid. So there is going to be question how did the parts of the decision interrelate? So, I expect still more litigation, but, it seems that we're going to go forward, that it's not the genes patentable but rather, the question is, as science is moving in, it's take a bunch of those genes and using them in a specific way. That might still be patentable, that's where this company will go and a lot of companies are going already, and in some senses, its 1990s science that we're talking about here.

Ted Simons: So the overall impact on biomedical, and, and, and just basically biotech, the industry, itself, in general, what do you see?

Gary Marchant: It's a mix, mix bag like patent law has a double edge sword so, on one hand it will help patients in the short-term, the cost of the test will be about third of what it is now, so people at risk of breast cancer will be able to get this for $1,000 or $3,000 so there is a direct effect for patients. For scientists and industry, I think that more scientists and industry are not patenting these than patenting them because the reason, you can use these in your science, and you can now use these to develop these more sophisticated tests, that before you are blocked by the patents.

Ted Simons: And I was going to ask about research and study and those things because it seems like there are parallel tracts. You have business on one side and study on the other and, and similar impacts or divergent?

Gary Marchant: This mix bag right, because on the one hand, the patents give the incentive and the reward to go forward and develop this, and spend the money on it, and if you don't get that reward, someone else come along and take that, people are not going to do that. On the other hand, once you have the patent, it's blocking other people from using that same invention. There is this double edged sword aspect to them and, and what's important is to get the right balance of not too much patenting but not too much. I think this decision, most researchers, most companies think it's probably good decision.

Ted Simons: So I have seen critics of the decision saying it's been slow, in the development, scientific breakthroughs by some of these commercial firms. Valid?

Gary Marchant: I don't think so, I think that there will be a bit of that but, much more on the upside because now, companies like say researchers like tgen, here in town, they took 10 or 20 or 30,000 genes and put them into test, and the problem before, is that they were blocked from doing that because some of these genes had patents, and more important is this idea of genome sequencing, this is a big thing coming down the line, and there, you take all 6 billion base pairs, and sequence them, and if there is 4,000 of those genes that have patents you might not be allowed to disclose that to the patient. So, this is, basically, blocking that innovation, that 21st Century science, is being blocked by these, these 20th century patents.

Ted Simons: They are saying that the private industry, that has access to the patents, will develop something now that they may not be able to develop, is opposite by the fact that a lot of folks can get a hold of that sequencing?

Gary Marchant: That's one case, and both the researchers and the patients, both are saying, will benefit from getting access to that and developing more sophisticated, next generation of genetic tests.

Ted Simons: What about synthetic DNA?

Gary Marchant: Patentable, that's the other part, the synthetic issuing DNA is possible, and not so much for human genetics, models and other research is being done, those are all the affected by that decision, as well. And the idea, that that this whole idea of synthetic biology, which is another big thing coming down the pike where you create new genes, those are all going to still be patentable.

Ted Simons: And applications of knowledge, of DNA. That's still patentable.

Gary Marchant: Although, there is another decision in the Supreme Court year ago, the male versus prometheus case asking the question, when you have a method of a test, is that patentable? That's where the action is today, and that's where more companies are at, and that's -- developing those tests, and unfortunately, that's really up in the air, which is the Supreme Court decision last year so there is a lot of uncertainty where these patents are going to go. The bottom line, it will be great for my graduates because there is going to be more lit gag for the next ten years.

Ted Simons: I was going to say, this is a fascinating thing. It sounds like everything is very much in flux.

Gary Marchant: It is, up in the air.

Ted Simons: And good to have you here. Thanks for joining us.

Gary Marchant:Arizona State University College of Law, Professor

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