Patenting Products Of Nature

“An About-Face on Gene Patents” incorrectly states that the government made a “policy shift” in holding that gene patents are barred as products of nature (C&EN, Nov. 8, 2010, page 10). The government is not making policy; rather, it is following Supreme Court precedents going back at least 125 years. “It is emphatically the province and duty of the Judicial Department to say what the law is” (Marbury v. Madison, 1803).

The Patent & Trademark Office has been following the law as stated by the Federal Circuit since 1982, and not Supreme Court law. When decisions of the patent courts are reviewed by the Supreme Court, three out of every four times the Federal Circuit decision is overturned. The Justice Department is now simply applying the supreme law of the land, not that of an inferior court.

Congress has the power to overturn Supreme Court precedents holding that products of nature are not patentable subject matter. But Congress has never explicitly overturned the product of nature doctrine. The mere fact that PTO has not followed Supreme Court precedents and has issued thousands of invalid patents does not make it right. The “handiwork of nature” is free for all and cannot be “owned” by companies that want to “protect their investments in research and development.”

The Constitution allows Congress to “promote the progress of” the useful arts by securing to inventors the exclusive right to their discoveries for limited times. Gene sequences express inheritable traits or characteristics created by nature. Those characteristics are passed to progeny by nature, not by man. Manipulating a gene sequence known to express a characteristic known in one species into the genome of another species not known to express that characteristic is an obvious solution to try when one seeks to have the characteristic in the other species. Nature expresses the characteristics, not man.

This issue may well be clarified by the Supreme Court in the relatively near future. I expect the Court will report that the law is that products of nature are not patentable subject matter.

John P. Sutton
Grass Valley, Calif.