US Gene Patents Thrown Out: Software Patents Next?


There's been an important development in the world of US patents:

Patents on genes associated with hereditary breast and ovarian cancer are invalid, ruled a New York federal court today. The precedent-setting ruling marks the first time a court has found patents on genes unlawful and calls into question the validity of patents now held on approximately 2,000 human genes.

That's notable because it asserts definitively (well, subject to appeals) that genes are not patentable matter – overturning decades of practice. Here's what the judge said on the issue:

Judge Sweet, however, ruled that the patents were “improperly granted” because they involved a “law of nature.” He said that many critics of gene patents considered the idea that isolating a gene made it patentable “a ‘lawyer’s trick’ that circumvents the prohibition on the direct patenting of the DNA in our bodies but which, in practice, reaches the same result.”

Note that it singles out “a ‘lawyer’s trick’ that circumvents the prohibition on the direct patenting of the DNA in our bodies but which, in practice, reaches the same result”. That's interesting, because it is essentially the same technique that is used in the world of software patents.

Patent offices around the world agree that “laws of nature” - for example, scientific or mathematical knowledge - cannot be patented, because like genes they cannot be invented, only discovered. So in some jurisdictions, patents lawyers resort to using the trick of claiming to patent some mythical “computer-implemented invention” (CII). Here's what the European Patent Office has to say on the subject:

The EPO does not grant patents for computer programs or computer-implemented business methods that make no technical contribution. Programs for computers as such are excluded from patentability by virtue of Art. 52(2)(c) and (3) EPC. According to this patent law, a program for a computer is not patentable if it does not have the potential to cause a "further technical effect" which must go beyond the inherent technical interactions between hardware and software.

On the other hand, a CII (even in the form of a computer program) that can provide this further technical effect can be patentable, subject to the other patentability requirements, such as novelty and inventive step. In this case, it would be recognised as providing a technical solution to a technical problem.

This makes the judge's comments about the “lawyer's trick” in the Myriad Genetics case particularly significant: it suggests that some at least are beginning to push back against such twisting of the law. Let's hope judges examining software patents in the wake of In re Bilski will think the same way.

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