The following editorial appeared recently in the Chicago Tribune:
America has always been a creative place, partly because the authors of the Constitution wanted it to be. Among the powers they granted Congress was the right "to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." That's the foundation of our system of patents as well as copyrights.
The principle is simple: Those who create something new should be allowed to profit from their creations. This compensates them for the unique value they have produced, while preventing others from freeloading on their work. It also encourages future inventors by holding out the prospect of greater financial returns than a patent-free world would allow.
But applying the principle can be tricky, as the Supreme Court found in a case it decided this week involving Myriad Genetics Inc. The company had isolated two genes, called BRCA1 and BRCA2, mutations which greatly increase a woman's chance of getting breast cancer. (Actress Angelina Jolie recently chose to have a preventive double mastectomy after learning she carried the mutation.)
It acquired a patent on the genes, allowing it to block other companies from offering diagnostic tests — elevating the price to more than $3,000 per test.
That will change. On Thursday, in a unanimous decision, the court ruled that discovering these genes does not qualify as an invention.
"Groundbreaking, innovative or even brilliant discovery does not by itself" warrant patent protection, said Justice Clarence Thomas. Writing for the court, he concluded that "a naturally occurring DNA segment is a product of nature and not patent eligible. ... Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes."
So Myriad will lose a lucrative monopoly: BRCA testing accounts for most of its revenue. Who will gain? Other companies in the field — and, more important, patients.
The verdict should generate a flurry of competition to offer better and cheaper tests for the mutation. "Many academic labs, including our own, will soon be offering panel tests for dozens, or even hundreds of genes, for the same price Myriad historically charged for just two genes," Dr. Kenneth Offit, chief of the clinical genetics service at Memorial Sloan-Kettering Cancer Center, told The New York Times.
There will still be money to be made from such discoveries, including the windfalls that normally go with being first — as Myriad was. But it will be divided among competing companies rather than cornered by a single one.
The consolation for Myriad was the court's ruling, in accord with what the Justice Department argued, that it is entitled to patents on synthetic forms of DNA that it has fashioned. cDNA, as it is called, "is not a product of nature and is patent eligible." An innovation of that sort, as the court recognized, is exactly what patents are supposed to promote.
With these crucial issues rescued from the fog of uncertainty that had surrounded them, scientists and entrepreneurs will now be able to pursue discovery and invention with a clear sense of the rules. Let the next surge of progress begin.