Biotech Patent Cases May Tank (yay!)

[mainegreen]

From law.com:

More than 100 biotech patent applications -- part of a land rush to protect bits of identifiable genetic markers -- will most likely be thrown out as inventions lacking practical use, as a result of a recent decision by the U.S. Court of Appeals for the Federal Circuit.

The Monsanto Co. case, closely watched by the biotechnology industry, is the court's first application of the patent protection standard of "substantial and specific" utility to nucleotide sequences known as expressed sequence tags, or ESTs -- a component of DNA.

continued at: http://www.law.com/jsp/article.jsp?id=1127133334233

Thank goodness! The idea that you can patent a genetic sequence you have 'discovered', not created wholesale yourself, is bad enough. But to be able to patent it when you have no idea how to use the bloody thing in any application? Daft! Lets hope this one stands up to further review!

[Xipe Totec]

1. They'll just switch to copyright law.

Which has no practicality requirement.

[Coastie for Truth]

3. That gambit only works for computer code

And copyright probably protect a business method written in C++ once it's dragged over to Java.

(Computer code is southeast of the Page Mill Rd-Stanford Univ-Sand Hill Rd megablock- and biotech is northwest of the Page Mill Rd-Stanford Univ-Sand Hill Rd megablock).

[Xipe Totec]

4. If you can copyright a poem,

you can copyright a DNA sequence.

Besides, DNA coding is closer to computer code than you might think.

[Coastie for Truth]

5. You can copyright

a REPRESENTATION of the sequence - but you can not copyright the sequence per se.

§ 102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.


(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

§ 106. Exclusive rights in copyrighted works

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:


(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

§ 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —


(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.


The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

The bolded portion (Section 102(b)) and the Fair Use exception pretty much preclude any real potection of the sequence by copyrighting the representation.

Your point "Besides, DNA coding is closer to computer code than you might think." is mathematically and biologically correct - BUT - the Constitutional and statutory basis for Copyright protection is "authorship" - and the "authorship" is in the representation of the DNA sequence not the DNA sequence itself. With computer code - the authprship is in creating the computer code.

[Coastie for Truth]

2. Biotech patents need a Greg Aharonian analog

Besides, my "Handbook of Patent Law for Engineers" says that natural products are not patentable subject matter - methods of identification may be patentable, methods of isolation may be patentable, and expressed sequence tags in synthetically produced recombinant DNA may be -- but expressed sequence tags in naturally occurring DNA -- it's time for Greg Aharonian to switch from "Business Methods" to "Gene Sequences."