‘Academic’ Intelligence: Are Genes Patentable? Part Two

Link to podcast to follow

A continuation of last week’s article, today’s entry will look at whether human genes (or the process for extracting those from the genome) can be registered as a patent under UK law by establishing whether the statutory criteria can be met in such cases.

( For a more detailed definition of the requirements, see << http://myveryownhell.blogspot.co.uk/2013/04/academic-intelligence-are-genes.html >> )

Novelty

The product/ process must be ‘new’ and must NOT form a part of the state of the art available to the public  at the priority date (date of filing application as per s. 5 Patent Act 1977 ‘PA’).

Unfortunately, the answer to the above is not as simple as it looks and is derived from a field of study that I tend to avoid at all cost- philosophy.

The question that needs to be answered is whether it is all possible to ‘discover’ genes that have always been there.

If so, would that forces such as gravity, etc. patentable as well?

As for actual process of separating a gene from the genome, it can be argued that the end result is something that does, indeed, form a part of the state of the art available to the public.

Inventive Step

Because of technological advancement, scientist have been able to distinguish between various genes and have, eventually, come up with techniques and process of separating those genes and cloning those.

It is arguable whether the said technological advancement can amount to an ‘inventive’ step which is not obvious to skilled but unimaginative professional.

Capable of Industrial Application

Human genes can be cloned; however, it still remains a question of morality. The processes for separating genes from the genome and cloning those to be used in various sorts of medication are currently used by some US companies who hold valid US patents to the genes used.

Not Excluded by PA

Under s. 1 (2) PA, a discovery, scientific theory or mathematical method CANNOT be patented.

Thus, even if genes WERE to be viewed as scientific discoveries, they would have still been excluded under the current statutory provisions.

The process of separating those from the genome, however, are not covered by the ay of the exceptions outlined in s. 1 (2) PA.

In the light of the above, then, it would seem that companies would struggle to register a human gene (or the process for separating and cloning one) as a valid patent under the current UK legislation.

It remains to be seen, however, whether the US Supreme Court will also decide, in June, that genes should not have been patentable under US law in the first place.

(See << http://myveryownhell.blogspot.co.uk/2013/04/good-idea-chap-are-genes-patentable.html >> )

Finally, would preventing companies from patenting genes stifle investment and was  Justice Kennedy not right in saying:

 “I think scientists look for things for a whole variety of reasons, sometimes because they’re curious about the world. I just don’t think we can decide the case on the ground, oh, don’t worry about investment, it’ll come.”