Something like the Sum: Why Even Isolated and Purified Genes are Still Products of Nature
![handle is hein.journals/tlr89 and id is 1467 raw text is: Something Like the Sun: Why Even Isolated and
Purified Genes Are Still Products of Nature*
[T]he heat of the sun, electricity, or the qualities of metals, are part of the
storehouse of knowledge of all men. They are manifestations of laws of
nature, free to all men and reserved exclusively to none.'
-U.S. Supreme Court
And yet, by heaven, I think my love as rare
As any she belied with false compare.2
-William Shakespeare
I. Introduction
On March 29, 2010, Judge Sweet of the Southern District of New York
issued an opinion in the case of Ass'nfor Molecular Pathology v. U.S. Patent
& Trademark Office3 holding that human genes are not patentable subject
matter.4 The ruling was a notable departure from thirty years of settled law.
The U.S. Patent and Trademark Office (USPTO) has routinely issued patents
involving human genes6 despite the broad-based opposition to such exclusive
rights from religious, scientific, medical, and human rights groups.7 Judge
Sweet's ruling is certainly not the end of the story, but it is an indication that
the accepted law is subject to persuasive criticism.
What would convince a district court judge to declare a whole class of
subject matter unpatentable despite almost thirty years of case law and
USPTO decisions? Part of the answer lies in the particulars of the case and
the behavior of Myriad Genetics in enforcing and licensing its patents.
* I would like to thank Professor John Golden for his help developing this topic and his
extensive feedback and suggestions on earlier versions of this Note. I am indebted also to the
editors and staff of Texas Law Review for their tremendous work and dedication in preparing this
Note for publication. Finally I want to express my deep gratitude and love for my wife, Rachel, for
all of her love, support, and encouragement without which I could not survive, let alone write.
1. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948).
2. WILLIAM SHAKESPEARE, SONNET No. 130.
3. 702 F. Supp. 2d 181 (S.D.N.Y. 2010).
4. Id. at 232, 237.
5. In 1982, the U.S. Patent and Trademark Office issued the first patent specifically covering a
human gene. U.S. Patent No. 4,322,499 (filed Dec. 22, 1978). The patent covered a gene fragment
relating to a human pituitary hormone and granted the inventors, scientists at the University of
California, the right to exclude others from making, using, selling, or importing the invention. Id. at
[57]; see also 35 U.S.C. § 154(a)(1) (2006) (enumerating the contents and terms of a patent in the
United States).
6. See Timothy Caulfield, Human Gene Patents: Proof of Problems?, 84 CHI.-KENT L. REV.
133, 133 (2009) (noting that the patenting of genes has been common practice for thirty years).
7. See Ass'nfor Molecular Pathology, 702 F. Supp. 2d at 190-92 (listing the amici curiae for
the plaintiff and summarizing their arguments).](ViewImageLocal?handle=hein.journals/tlr89&div=62&collection=&method=preview&ext=.png&size=3)
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Something like the Sum: Why Even Isolated and Purified Genes are Still Products of Nature
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