Judge Sweet seemed to dismiss Myriad’s constitutional taking and TRIPS claims by indicating:
“Finally, Myriad’s suggestion that invalidating the patents-in-suit would constitute an unconstitutional taking in violation of the Fifth Amendment of the Constitution or a violation of the United States’ obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) is unpersuasive. Myriad’s novel taking argument runs counter to a long history of invalidation of patent claims by the courts and is unsupported by legal precedent. Similarly,Articles 8.1 and 27.3 of TRIPS permit governments to incorporate public health concerns into their intellectual property law and to exclude from patentability diagnostic, therapeutic, or surgical methods as well as particular inventions on the grounds of public interest. As a result, invalidation of the patents-in-suit would constitution neither a constitutional violation nor a conflict with the Untied States’ treaty obligations.” Pages 106-107. Emphasis added.
Alnylam’s Appellate Brief to the Circuit Court in the Myriad case argues that “excluding certain “compositions of matter” from patent-eligibility would violate the United States’ treaty obligations under the TRIPS Agreement.” pg. 17 The Brief goes on to discuss this legal issue as well as international policy implications. pg. 18-19
Questions for thought:
1. Would ‘isolated DNA’ even constitute an “invention” under TRIPS Article 27.1? How do other nations view patentability of ‘isolated DNA’ and how does that affect a TRIPS analysis? See European Union Biotechnology Directive and WIPO’s ”Information provided by WIPO Member States Concerning Practices Related to the Protection of Biotechnology Inventions.”
According to practice, a Dispute Panel would use the ordinary meaning of the word (probably from the Oxford English Dictionary) and look at common practice around the world. Isolated DNA seems to meet the definition of ‘invention’ and the resources mentioned above seem to back up the assertion.
2. What about Alnylam’s “discriminatory… as to the field of technology” argument? Does Judge Sweet’s opinion discriminate against DNA based patents and/or the Biotechnology Industry? How does the DOJ’s Brief fare?
Based on a WTO Dispute Panel analysis on discrimiation in a similar context (see CANADA – PATENT PROTECTION OF PHARMACEUTICAL. PRODUCTS), it seems that both Judge Sweet and the DOJ Brief are discriminating against DNA based patents and the biotechnology industry. Judge Sweet creates a patentability exemption for ’isolated DNA’ and DNA based inventions (to an unknown point). The DOJ seem to create a new ‘isolation’ test which implicates much more than ’isolated DNA’. Both approaches specifically target the biotechnology ‘field of technology’ and have devastating effects on the industry.