Patent News | "Fight over human genes patents goes to the US Supreme Court"

By: Karen Barlow
Category: Patent News

MARK COLVIN: The fight over human genes and whether they can be patented for medical research has gone to the US Supreme Court.

The American Civil Liberties Union and the Public Patent Foundation filed their appeal today.

They argue that genes are products of nature and cannot be sequestered by private companies.

The case concerns Myriad Genetics - a biotech company that holds patents on two genes which can help reveal susceptibility to breast and ovarian cancer.

There's concern that their monopoly position stymies research and restricts patient access to tests and treatment but the biotech sector and patent lawyers say there are safeguards.

Karen Barlow reports.

KAREN BARLOW: If there's a good news story about breast cancer it's usually about genetic testing and research.

It's the great hope for a prevalent and debilitating disease.

But behind the scenes the genes that trigger some of those cases have been patented by the private company Myriad Genetics and public advocacy groups say that's going too far.

LUIGI PALOMBI: What happens is if you have a patent on the gene you can control everything that happens with that gene.

KAREN BARLOW: Luigi Palombi is an ANU visiting fellow and consultant on intellectual property law.

LUIGI PALOMBI: So you can control its use in research, you can control its use in the development of a medicine, you can control its use in the use of a diagnostic etc. etc. And yet all you've done is discovered a link between a gene and either a disease and some sort of other ailment or its function in the human body.

KAREN BARLOW: Luigi Palombi says that's not good enough to qualify as an invention and he says that's what the American Civil Liberties Union and the Public Patent Foundation is asking the US Supreme Court to rule on.

LUIGI PALOMBI: The whole argument revolves around whether the removal of the human gene puts the gene into a different state to the point that it can be claimed as an invention.

All of the scientific evidence suggests that it shouldn't be. I mean what the scientists are saying is that a gene inside a human body and that same gene outside of the human body is essentially the same thing.

KAREN BARLOW: The Supreme Court filing is in part an appeal against a lower US court ruling in July that companies can take out human gene patents.

It also mirrors Federal Court action in Australia against Myriad Genetics, which is due to begin in February.

Myriad's Australian legal counsel has been sought for comment. In the meantime, the Institute of Patent and Trade Mark Attorneys is backing Myriad's claim to patent human genes.

The institute's Tania Obranovich.

TANIA OBRANOVICH: The issue I think of whether somebody owns some limited right over a gene or not is less important, what is important is that no-one can abuse that monopoly and secondly that the public does have access or that if someone tries to abuse that monopoly that there are safeguards in place.

What would be a greater tragedy would be if there is no possibility of monopoly and then no-one develops the technology and then no-one has access at all.

What would be a greater tragedy or the greatest tragedy would be if that test had never been developed because there had for example not been patents allowed over the technology; that would be a catastrophe for the community.

KAREN BARLOW: There's also been an effort to change Australian law.

Liberal Senator Bill Heffernan is trying to outlaw human genetic patents.

But a senate inquiry earlier this year recommended against a private members bill that would stop gene patents.

Senator Heffernan says supports today's legal action and is still hoping legal change will happen in Australia.

BILL HEFFERNAN: Well everyone will say they have sympathy with what we're on about but don't want to take the step because they say it will dismantle research. Well in fact it'll encourage research and if you're a researcher at Westmead Hospital locked up in a room on a six month contract doing research and you run into someone else's patent on a gene, you haven't got the resources to take them to court etc.

And so we took evidence during the inquiry that it in fact was impeding research but of course the bankers and lawyers and the gold seekers don't agree with that, they want the party to continue, which is for 30 odd years as the American government said in the recent court case in America that they've misinterpreted the law. Clearly the law says you can't patent discovery, hence no-one patented the moon when they discovered it.

KAREN BARLOW: The US Supreme Court case load is heavy and it may be some time before the human gene patent appeal is heard.