The Supreme Court's decision to deny patents on genes but allow patents on synthetic genes was perhaps not as clever as many commentators seemed to think.
On the surface, it makes sense: Patents shouldn't be awarded to genes any more than they should be awarded to a block of wood. Genes were not invented by anyone; they exist in nature. The other part of the decision seems to make sense, too: If researchers synthesize something in the laboratory, it's an invention, and it is as deserving of a patent as Edison's light bulb.
But did researchers at the biotech company Myriad Genetics synthesize the genes in question here?
What the researchers are doing is using a naturally occurring messenger RNA molecule–in which the non-working bits of DNA that don't contribute to the gene's function have been naturally removed–as a template to create a gene without the non-working parts. The results is called cDNA, or complementary DNA. The court said that this could be patented even though all the knowledge to "synthesize" it comes from nature. Nature provides the gene sequence, and it shows which are the non-working parts.
The tools to do all of this might well be deserving of a patent, but the court is still allowing companies to patent something that occurs in nature.
It's a little bit like saying you can't patent a banana, but if you take remove the skin–the non-working part–you've invented something that doesn't exist in nature! A skinless banana!
I was not able to fully articulate my view on this until I read Noah Feldman's analysis at Bloomberg. Feldman, a Harvard constitutional lawyer, writes:
There is nothing that a 6-year-old would consider “invented” about the patentable cDNA. It is nothing more than the messenger RNA flipped into a DNA sequence that omits unnecessary elements that nature already excluded. The sequence that codes the proteins is just as naturally occurring as the original DNA itself, which the court held couldn’t be patented because it was naturally occurring. The distinction is, to put it bluntly, a lawyer’s distinction, not a scientist’s. We are accustomed to disparaging law-office history. The Myriad Genetics case is giving us law-office biology.
Unfortunately, Feldman then backs away from this persuasive analysis and endorses the court's decision, writing that its "desire to preserve something capable of being patented in genetic research makes a certain amount of sense," because "a large and ever-increasing share of scientific advances" is "dependent upon private financing."
Feldman writes that the court's decision is utterly unconvincing, then decides that an unconvincing decision is OK, because, heck, pharmaceutical companies need to make money. If the court gave us law-office biology, Feldman is giving us Wall Street biology. Perhaps he should listen to that six-year old, who happens to be his precocious daughter.
Interestingly, The Los Angeles Times, in its story, quotes a passage from the court's decision that backs up this logic. "Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention," Justice Clarence Thomas wrote in the unanimous decision. (Others jumped on this quote, too.) That is as true of the cDNA as it is of the gene itself–Myriad simply separated the gene from its surrounding material.
A key issue in the coverage is not what news outlets wrote about the gene–that was easy to get right–but what they reported about the cDNA issue. David G. Savage elaborated on the patent denial for a dozen-and-a-half grafs before mentioning that Myriad would retain patents on so-called synthetic genes. On the other hand, he waited five or six more grafs before mentioning Angelina Jolie, so props for that.
Adam Liptak at The New York Times was able to get to the cDNA distinction high in his story, and he got to Angelina Jolie high in the story, too. (Honestly, I don't know where I would have put Jolie in a story if I had written one. I do know that I would have agonized over it. Use it as a news peg to draw in readers? Or bury it to avoid giving celebs more attention than they deserve? I dunno.)
Richard Wolf at USAToday got to the cDNA in the third graf, writing that the court "held out a lifeline" to Myriad Genetics.
Heidi Ledford at Nature reported the validity of cDNA patents in the second graf and wrote that "many have argued that the outcome of the case would have little practical bearing" on biotech or testing because "the patents in question are relatively rare."
That's an interesting point, with which other commentators disagreed. I suspect that it will take some time to know precisely what the practical implications of the decision are.