Although UC professors voiced support for the U.S. Supreme Court’s decision against human-gene patenting last Thursday, some expressed concern over the uncertainty that remains about other types of genes that could be held for profit.
In Association of Molecular Pathology v. Myriad Genetics, the justices ruled that human genes cannot be patented. UC professors responded positively to the unanimous decision.
According to Robert Nussbaum, a professor at the UCSF School of Medicine, the ruling will dramatically decrease the cost of genetic testing and overall expand the ability to do clinical research as testing will be less expensive.
“The problem before was that that the research was contained in one company, and that prevented us from doing more research,” Nussbaum said. “I really think this is a big win for physicians, researchers and patients.”
Some UC Berkeley professors expressed concern that the decision leaves uncertainty about which genes are patentable, specifically in the case of complementary DNA.
Myriad Genetics, the company that long held a patent on two genes linked to breast cancer, set the precedent for forbidding the patenting of a human gene. However, the justices did not prohibit the patenting of cDNA, classifying it as “synthetically created” because it is created in a laboratory through a process called reverse transcription.
“I personally don’t see that there’s any difference between patenting DNA and patenting cDNA,” said Henk Roelink, a campus professor of molecular and cell biology who specializes in genetics. “There’s gonna be some trick in the middle that can circumvent this decision, and a lot of companies will run circles around it.”
Myriad Genetics does not expect an impact on its operations, said Ron Rogers, executive vice president of corporate communications.
“We still have robust intellectual property,” Rogers said. “We view it as positive because the court upheld the cDNA patent eligibility.”
In court, a Myriad Genetics lawyer, Gregory Castanias, argued his defendant’s case by comparing gene isolation to the creation of a baseball bat, explaining that it “doesn’t exist until it’s isolated from the tree.”
“But that’s still the product of human invention to decide where to begin the bat and where to end the bat,” Castanias said.
Five out of the nine claims that the court was concerned with were ruled ineligible.
“Myriad did not create anything,” Justice Clarence Thomas wrote to the court. “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.”
According to Irvin Mettler, an associate director for the campus Office of Technology Licensing, Berkeley has very few patents involving the identification of a gene sequence, so on-campus research may not be directly impacted by the decision.
However, UC Berkeley professor of molecular and cell biology Michael Botchan said the decision will more broadly increase competition, which will lead to better diagnostics than those that currently exist.
“I think it eventually might increase the size of the database for the people who want to increase screenings,” Botchan said. “There will be more sequencing and companies that will be developing new diagnostics.”
Contact Jane Nho at [email protected]