Should Genes be Patented?

Should Genes be Patented? This is a question of tremendous importance, and one that is the subject of an Australian Senate Inquiry. Chris Dent and I sent in a submission on behalf of IPRIA and CITE, which is available here. We believe there is insufficient empirical evidence (yet) upon which to make specific changes to patent law. Other people have quite different views, as expressed in their submissions. Next month, we are organizing a CITE & IRIA public event on this topic. It will include a discussion by four panelists: Gillian Mitchell of the PeterMac Cancer Centre, Gregory Mandel from Temple University, Dianne Nicol from the University of Tasmania, and Dan Peled from Haifa University in Israel. The event will be chaired and moderated by Joshua, and will include a 45-minute public debate. Post your thoughts here. Or better still, sign up for the event at

Author: kwanghui

2 thoughts on “Should Genes be Patented?”

  1. No, genes should not be patented. Patents were introduced to protect the intellectual property embodied in an invention and nobody except Creationists considers genes to be inventions. It makes no more sense than permitting someone to patent uranium or dihydrogen monoxide.

    Sure, if someone comes up with a new processes for manufacturing dihydrogen monoxide, that could be patentable but the resulting product should not.

    Similarly if someone comes up with a new process ir substantial improvement to an existing process for identifying a specific gene, or a process with a useful result that exploits unique properties of a particular gene, that could be patentable.

    Cancer researchers can brief you over the uproar that occurred last year over a patent covering testing of breast cancer genes BRCA1 and BRCA2, when the Australian licensee instructed government laboratories to cease testing for the genes. While the patent is generally described as covering the genes themselves, that does not appear to be the case (I believe the original patent is USPTO 5,214,104, “Chromosome 13-linked Breast cancer susceptibility gene” although there may be subsequent related ones.) There is no specific claim of inventiveness or novelty about the gene itself.

    However it has had much the same practical effect as if it did, and the licensee considered that it had the power to ban tests by anyone else that identified relevant mutations,

    My view is that the first big thing wrong with patent law is that the test that a patent be novel and involve an inventive step has become trivialised and that almost anything is accepted by examiners if dressed up in sufficiently baroque legal language.

    At Richard Stallman forensically dissects US Patent 5,963,916, which claims novelty and inventiveness for the process of storing music clips on a web server so that people can access them with their web browser. The internet was first opened on a large scale to commercial enterprises and consumers in 1994 so when this patent was filed the idea of accessing music from an internet web server was indeed novel to most people (including presumably USPTO patent examiners) but to people familiar with the state of the art such as Stallman, the idea was almost contemptibly trivial.

    The other main problem with the patent system is its pre-emptiveness. Once a patent is granted, it is expensive to challenge it and may involve lengthy court proceedings. As far as I can tell, patent examiners rely largely on previous patents to determine the state of the art. As increasing amounts of intellectual property are made available through open source channels or through revelation of commercial secrets, prior patent literature is a dangerously narrow source for determining novelty.

    I suspect that if examination were limited to prior patents, John Michael Keogh’s brilliant 2001 innovation patent application for a “Circular transport facilitation device” might have been eligible for a full patent,

    His abstract describes his innovation as:

    “… a transport facilitation device including a circular rim, a bearing in which a hollow cylindrical member is rotatable about a rod situated within the hollow cylindrical member, and a series of connecting members connecting the circular rim with the hollow cylindrical member to maintain the circular rim and the hollow cylindrical member in substantially fixed relation, wherein the rod is positioned on an axis perpendicular to the plane of the circular rim, and substantially central of the circular rim.”

    Those familiar with patent lawyerese will easily figure out what the invention refers to, and I agree that it is hugely novel. There does, however, appear to prior art even if it is not reflected in Australian patent literature.


Comments are closed.