Today the U.S. Supreme Court issued a unanimous decision on the Myriad Patent case, having to do with the company’s ownership of BRCA-1 and BRCA-2 gene sequences. The main opinion, authored by Justice Thomas, says this:
A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.
At first glance, this is terrific news for patients worldwide. It means that no company, university, other entity or individual can patent human genes.
Keep in mind, the case doesn’t just apply to BRCA and evaluating a person’s risk for breast and ovarian cancers. Rather, there are hundreds of human genes implicated in cancer that are potential targets for treatment that might be evaluated, and thousands linked to other diseases. The decision continues:
Myriad did not create or alter either the genetic information encoded in the BCRA1 and BCRA2 genes or the genetic structure of the DNA. It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the ... patent law.
What’s clear is that gene sequences, as they occur in human cells, can’t be owned just because they’re found, no matter how important they are. This circumstance should allow other researchers and firms to create cDNA from the natural sequences to develop new (competing and potentially less costly) assays and, even better, do their own work—tantamount to providing “second” and “third” opinions, necessary research to understand how the genes lead to disease in some people and might be targeted for therapy. Great.
But the decision suggests that many lab-generated complementary DNA (cDNA) strands remain patentable, or up for grabs once created—which may be the reason some biotech stocks have rising values today. I’m neither a lawyer nor an analyst, but I do know from my experience as a researcher that it’s essentially trivial to generate cDNA from short segments of DNA. So how might the cDNA be patented, if anyone who has access to the original genetic sequence might form the cDNA using routine lab methods?
Near the end of the opinion, the justice writes:
[B]ut the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a "product of nature" and is patent eligible under patent law §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.
The document clarifies the cDNA issue just slightly:
It is important to note what is not implicated by this decision. First, there are no method claims before this Court ... the processes used by Myriad to isolate DNA were well understood by geneticists at the time of Myriad’s patents ... were well understood, widely used, and fairly uniform insofar as any scientist engaged in the search for a gene would likely have utilized a similar approach....
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 patent law §101 to such endeavors.
How I interpret this is that if a researcher generates a short cDNA segment based on a gene, that’s not patentable, but if it’s a long strand involving lots of clipped introns, that might be patentable.
Taking in all this, which is far from simple, I have a question and a wider point:
What goes unaddressed by the justices is the patentability of cDNA based on common genetic variants in cancer. Those are “naturally occurring” mutations, inasmuch as they arise in humans. But the cDNA generated from those sequences might remain patentable. There are loads of examples in this regard: Consider the genetic mutations in EGFR, and ALK that are used in lung cancer diagnosis, treatment decisions, and development of new targeted drugs. In the current issue of the New England Journal of Medicine, doctors report on SALL4, a gene that occurs in some liver cancers and might be a good, useful target for therapy in that disease.
The point is that the Supremes—and those would-be lawyers—need to know about biology. Justice Scalia, sadly in my view, wrote his own opinion not because he disagreed with the others, but because he felt there was too much science in the decision. From the Scotus Blog today:
Many readers no doubt will share the view of Justice Antonin Scalia, in a short, separate opinion refusing to join in a section “going into the fine details of molecular biology,” of which he said he had neither knowledge nor belief. Scalia said he did understand enough....
This scares me, that one of the justices, our most accomplished lawyers who might make decisions on cloning, and stem cells, and who knows what in the future, copped out because he lacks science education—what should be required high school biology in U.S. schools, public and private—to form an opinion that matters so much.