[Upd-discuss] patenting genes

[Lawrence Kolodney]

To patent a new chemical compound, you must enable a "person of
ordinary skill in the art" (i.e. a trained scientist in the case of
genes) to "make and use" the invention.

Genes exist in nature, so you can't patent the gene per se.  But what
you patent is a purified version of the gene(i.e. one isolated from
other DNA in the genome), which does not occur naturally, but which
may be useful because you can insert the purified gene in other
organisms to make genetically engineered cells.  (You can also patent
the organisms created in this manner).

However, an invention also has to be "useful."  If you don't know what
the gene does, then you can't show that it is useful (and can't show
how to use it).  So even if you can show how to make it, you haven't
satisfied the criteria for patentability.

(Not speaking for my employer)

> -----Original Message-----
> From: Robert Weissman [mailto:rob@essential.org]
> Sent: Thursday, March 16, 2000 1:20 PM
> To: upd-discuss@venice.essential.org
> Subject: [Upd-discuss] patenting genes
> 
> 
> As many may know, the issue of the patenting of the human 
> genome is now
> very hot (see cover of today's Wall Street Journal).
> 
> I remain unclear on how it is that patents are granted for 
> genes. Why is
> not the discovery of a gene a non-patentable discovery rather than a
> patentable invention?
> 
> The patent office is now making a distinction between finding 
> genes and
> being able to explain what a particular gene does, with a 
> tendency to give
> patents only the latter case. But why does this cross the invention
> threshold?
> 
> This is not to ask for a moral critique of life or human 
> patents, or even
> necessarily a legal critique of the patents. I'm just trying 
> to understand
> the basic rationale for granting patents in these cases.
> 
> Robert Weissman
> Essential Information			|   Internet:	
> rob@essential.org
> 
> 
> 
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