The Corner

Clarence Thomas Shows How It’s Done

The Supreme Court, in a rare unanimous ruling authored by Justice Clarence Thomas, has declared that genes cannot be patented. I bring it to the Corner’s attention because the ruling is a splendid example of how Supreme Court decisions should be crafted.

Thomas starts with a very good primer on genetic biology. Then, to the legal heart of the matter. Myriad discovered the exact location of two genes, which when mutated, dramatically increase a woman’s risk of contracting breast and ovarian cancer. From the decision:

That information…enabled Myriad to develop medical tests that are useful for detecting mutations in a patient’s BRCA1 and BRCA2 genes and thereby assessing whether the patient has an increased risk of cancer. Once it found the location and sequence of the BRCA1 and BRCA2 genes, Myriad sought and obtained a number of patents.

But the patents sought were based on naturally occurring biological processes, which matters under patent law:

Laws of nature, natural phenomena, and abstract ideas are not patentable…Rather, “they are the basic tools of scientific and technological work” that lie beyond the  domain of patent protection…As the Court has explained, without this exception, there would be considerable danger that the grant of patents would “tie up” the use of such tools and thereby “inhibit future innovation premised upon them.”…This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980) (Products of nature are not created, and “manifestations . . . of nature [are] free to all men and reserved exclusively to none”). 

Myriad discovered gene processes, it didn’t alter them:

The location and order of the nucleotides existed in nature before Myriad found them. Nor did Myriad create or alter the genetic structure of DNA. Instead, Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13. The question is whether this renders the genes patentable.

Answer, no. But that should not result in stifling the field:

It is important to note what is not implicated by this decision. First, there are no method claims before this Court. Had Myriad created an innovative method of manipulating genes while searching for the BRCA1 and BRCA2 genes, it could possibly have sought a method patent…Similarly, this case does not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes…Nor do we consider the patentability of DNA in which the order of the naturally occurring nucleotides has been altered. Scientific alteration of the genetic code presents a different inquiry, and we express no opinion about the application of §101 to such endeavors. We merely hold that genes and the information they encode are not patent  eligible under §101 simply because they have been isolated from the surrounding genetic material.

That’s how a Supreme Court decision should be written: Precise. Limited in scope. No bloviating. To the point. Applying, not creating law. Bravo Justice Thomas. Would your colleagues knew how to do it as well.



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