Gene patenting and free software: a breakthrough
Last week, to the surprise of patent lawyers and the biotechnology industry, advocates for technological freedom won an enormous victory against socially harmful distortions of patent law. The Federal District Court for the Southern District of New York held invalid patents owned by Myriad Genetics on diagnostic testing for genetic susceptibility to the most common hereditary forms of breast and ovarian cancer. By "patenting" the right to determine whether the BRCA1 and BRCA2 genes are present in the relevant mutated form in a women's genome, Myriad Genetics has been able to exclude all other laboratories from conducting the test. Patients and their insurers have paid much more, and women and their families have waited crucial weeks longer than necessary for information relevant to treatment and potentially affecting survival.
The Public Patent Foundation and the American Civil Liberties Union challenged the patent on the ground that the Act does not permit the patenting of "facts of nature." In a lengthy and carefully argued opinion granting summary judgment, Judge Robert Sweet agreed. Judge Sweet rejected the basic premise on which gene testing patents such as the one granted to Myriad have been justified: that the amplification of naturally-occurring DNA sequences is a patentable transformation of the DNA molecule. Instead, Judge Sweet adopted the view put forward by Myriad's own expert witnesses, that DNA is a special molecule, "a physical carrier of information," and therefore held that the reading of such naturally-occurring information is not patentable subject matter. Whether posed as a new composition of matter, or as a method for "analyzing" or "comparing" DNA sequences, Judge Sweet held, Myriad's attempt to gain a monopoly on looking at a particular DNA sequence to find out what it says falls outside the permissible scope of patent law.
In reaching his legal conclusions, Judge Sweet relied significantly on the recent opinion of the Court of Appeals for the Federal Circuit, which has primary responsibility for interpreting the nation's patent law, In re Bilski, 535 F.3d 943 (2008), now pending in the Supreme Court. Bilski, as readers here will know, raises issues concerning the patentability of business methods and computer software, on essentially the same basic ground: that, as the Supreme Court has said, "phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Judge Sweet's opinion may be said to raise the stakes on Bilski slightly, but the parts of the Federal Circuit opinion on which Judge Sweet relies are not about the "specialized machine or transformation of matter" test adopted by the Federal Circuit to distinguish patentable from unpatentable inventions involving computer software and methods of doing business. Judge Sweet followed the Federal Circuit closely in its expression of the settled law of patent scope, making it more unlikely that the Federal Circuit, which will hear the inevitable appeal from Judge Sweet's judgment, will be inclined to disturb the conclusion.
Instead, Judge Sweet's ruling shows the beginning of a broader front in the judicial determination to reign in patenting that has gone too far, turning information that should be free to all into property exclusively held by a few. Neither our patent law itself, nor the guarantees of freedom to learn and teach protected by the First Amendment, can tolerate the widespread creation of statutory monopolies on ideas. Judge Sweet's conclusion with respect to gene patenting confirms and supports the position taken by the amici curiae in Bilski, including the Software Freedom Law Center, that computer software standing by itself, another carrier of information about algorithms, or mental processes, is not within the scope of patent law. Judge Sweet's opinion illuminates another of the large classes of human knowledge presently being made the subject of statutory monopolies through the patent system, but which cannot legally be made monopolies at all.
Americans have begun to understand a little bit about how, in the last two decades, corporations and their servants turned more and more of our society's opportunities into property for themselves. The sorrow and anger that is entering our politics, as honorable working people realize how badly they were had, will not soon abate. That the patent system too was gamed by the powerful at the expense of everybody else has not been fully grasped yet. But it will be. Time will show that Judge Sweet was more than courageous in his ruling, that he was also speaking with the voice of America behind him, as all great judges do.
19 Comments
Thankyou
Thankyou Eben for your tireless work and this latest reporting. I am very grateful that the FLOSS community has you on its side. We would be lesser if it were not for your influence in all matters of IP law. Thankyou once more for passing this word.
Thanks so much
The butterfly effect in action. Thank you so much.
Perhaps a backup plan
"Judge Sweet's opinion may be said to raise the stakes on Bilski slightly"
I think that depends a lot on how broadly the Supreme Court rules in the Bilski case. If the Supreme Court rules that carriers of information about algorithms, or mental processes, is not within the scope of patent law then that ruling will sink gene patents before Myriad ever reaches the Supreme Court.
If the Supreme Court decides Bilski on very narrow grounds and does not rule on whether algorithms and mental processes are patentable then the Myriad case will give us another kick at the can when it reaches the Supreme Court. We could submit an amici curiae in the Myriad case which would ask for a broad enough ruling to abolish software patents as well as gene patents.
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Steve Stites
Thank you for this report, Eben
I especially appreciated the context that you put this into, the use of patents by the powerful to extract rents from society, and the slow but inevitable backlash this is causing. It's the failure of the state to protect the weak against the powerful that is the greatest injustice, and the one that motivated many of us to work against software patents (and more broadly, the patent system as a tool for large businesses to take ownership of our future).
FLOSS Community?
Excellent post and a great victory for the open source community and the rest of the world. I had to laugh when I read the comment from brotherred about the FLOSS community I wasn't expecting anyone to go all dental about this. I am sure he meant FOSS.
FLOSS = Free (Libre) Open Source Software
Personally, I always use the term FLOSS because the word "free" in English can mean both "free as in beer" and "free as in liberty". French and Spanish don't have this problem: "free as in beer" is "gratuit" or "gratis", while "free as in liberty" is "libre". Including the "L" shows we mean liberty, not beer.
Where is the pay-off?
A patent grants the proprietor thereof a limited monopoly for a period of about 20 years. Eben speaks in his article of "... corporations and their servants turned more and more of our society's opportunities into property for themselves." What you need to remember is that these corporations spend millions and millions of dollars on research and development, without which, "society's" opportunities would not even have existed.
You fail to grasp that the limited monopoly is the pay-off for the millions and millions of dollars spent on research and development. If there is no pay-off, no monopoly to be gained, for making scientific breakthroughs, the "corporation scum" will not be investing in research and development and society's opportunities will disappear.
Maybe you see this as a battle won for the people, but I tell you, you celebrate future generations being deprived of some possibly awesome scientific breakthroughs.
Pay off?
@patentprofessional
What is the payoff from images from the Hubble Telescope? What is the payoff from the data gathered from the Mars rovers? What is the payoff from data gathered from *any* basic research function?
The flaw in your analysis is that every scientific endeavor *must* have an economic payoff in order to advance. There are many scientific challenges that have no known short-term economic benefit, yet are funded. Ever heard of the Large Hadron Collider? What do you expect to patent from the discovery of the hadron subatomic particle?
I assume that the Hubble
I assume that the Hubble Telescope and Mars Rover projects were undertaken by NASA. Here's a quick link to abstract of NASA's 1000+ patents: http://www.sti.nasa.gov/Pubs/patents/patents.html
Images and data collected by these projects are not patentable, you cannot protect images and data. The true value lies in the inventions derived from this research and I submit again, that if there isn't at least a probability for economic payoff, research projects, such as those you have mentioned above, will not be undertaken and the images from the hubble telescope, and the data from the Rovers, will never have been taken or gathered.
I agree that it is possible that there may be some research purely devoted to understanding and broadening knowledge, but who will fund this? At the end of the day we need these corporations to fund these awesome projecst so that society's knowledge base is broadened. And giving them the fruits of their discoveries (for a limited period of 20 years) seems like a small price to pay.
@patentprofessional "I agree
@patentprofessional "I agree that it is possible that there may be some research purely devoted to understanding and broadening knowledge, but who will fund this?"
EPA, DOE,NIH, USGS, NOAA, NASA, DOD... Just a few.
"At the end of the day we need these corporations to fund these awesome projecst so that society's knowledge base is broadened."
What corporate fundamental research can you cite? I've just listed seven agencies that fund *basic* research - research that has no certainty of generating any income but attempts to answer a question of a fundamental scientific nature (i.e., what happens to subatomic particles at higher energies than 14 MeV?). I doubt that you can name one other than IBM now that Bell Lab's is essentially dead.
corporations
To patentprofessional:
I am a scientist. You are talking about science done by corporations. Are you saying they are the authors of all discoveries in science, and therefore, they deserve to be paid for? My answer is, most science, the true discoveries, have been done by scientists from universities and institutions using the public's money (taxes). Corporations are money makers. That is their true color: they just want to squize money from anyone. How they do it? They look into the literature, the PUBLIC scientific literature available to everyone, and mostly published by laboratoires from universities and institutes around the globe. Then use this information in their profit. A company then produces a drug and sell it to the public at very high price. That is in short. But tcompanies are far from being honest though. How many drugs have been removed from the market because they are dangerous? So, don't assume these companies are victims of a complot.
To Pete I understand your
To Pete
I understand your point, and I assume from your post that you gain satisfaction from your research merely by broadening society's knowledge base. I respect that, I really do, but as you stated above, you are paid with public funds. Those funds come from corporations and institutions who, as you mentioned, are the money makers. Were it not for the corporations, your publicly funded research would never have existed and future generations will be deprived of your research.
I am not saying that only corporations deserved to be paid for their breakthroughs. Unfortunately, they are the only ones who use the patent system the way it should be used. They protect their inventions so that they can make more profit, and in return, their inventions fall into the public domain after 20 years.
CRADA
@patentprofessional "Unfortunately, they are the only ones who use the patent system the way it should be used."
How familiar are you with government agencies patenting discoveries? Did you know that the government obtains patents on discoveries that it funds? Ever heard of the CRADA process?
Patents and innovation.
@patentprofessional
There is so much wrong with the notion of patent as necessary (and sole) means to incentivize R&D that I think the best response is a reference to a textbook.
The granting of patents in some area is, of course, only justifiable at all if it is significantly beneficial to scientific and technological progress and social welfare. That is something to bear in mind in view of the fact that 'gene patents' apparently haven't done much harm to research - yet!
http://books.nap.edu/catalog.php?record_id=11487
I do not think that a patent
I do not think that a patent is the sole means of incentivizing R&D. Quite frankly there are many ways to incentivize R&D, for example, war or disaster. However, in the absence of war or disaster, monetary gain is a driving force that pushes the boundaries of technology.
If this monetary gain drives technology forward, how can you say that it is not beneficial to scientific and technological progress?
We are talking about the
We are talking about the effects of patents - not “monetary gain” - on progress and welfare. You obviously haven't read that book I linked to (it's free to download, btw) or any other on innovation economics. Not only can patents fail to be beneficial (even just to the sci. and tech. progress part of the equation), there are several well-known instances in history where they clearly have retarded progress. For a salient and recent example of one way this can happen see e.g. An Empirical Look At Software Patents by Bessen and Hunt.
Money?
@patentprofessional "However, in the absence of war or disaster, monetary gain is a driving force that pushes the boundaries of technology."
What economic benefit was bestowed on the early researchers in electromagntics? How much money did Faraday make for his discoveries? How much did Leo Szilard make for his discoveries? What was Einstein's net worth at the time of his death due to the publication of his papers in 1905 and 1917? How much money did Feynman get for his discoveries? Other than the Nobels that many of these researchers received, they saw nothing in real economic terms from their works - except for the recognition of their contribution.
Don't you concede that people are motivated by things other than money?
Eben Moglen - Invalid Patent
Awesome ruling, well written article Eben! Very informative on first reading.
Would like to raise the question of how this might translate to plant genetic modifications? I see easy translations in the area of plant GMO's. These also have some connection to long term socially harmful results.
The more general fields of herbicides, insecticides and fungicides in agricultural and food production also would seem to have some connection. Our entire food production and delivery system in present time seems to be controlled or highly leveraged to a few similar type patents.
Who is sufficiently knowledgeable and resourceful enough to take up the challenge of harmful patents in our food system?
Thank you for the opportunity to comment.
Thank you!
Thank you so much for writing this article and keeping everyone informed of the status of the 'Patent Wars'. There are a lot of people out there who have no idea what battles are being fought to protect their freedoms.
I think the work of the FSF, SFLC, Groklow and all the other OS organizations are extremely important in deciding what future direction our world is going to take. If it wasn't for the people tirelessly fighting IP/patent laws, we would be heading for a very dark future indeeed(think mega-corporations[eg. Blade Runner] ).
I have some friends (a labtech and a ct tech) who might be interested in this article. I hope to convince them to send this to their coworkers. Thanks again.
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