Supreme Court Gene Patent Ruling, With David C. Berry, Professor at Thomas M. Cooley Law School

There has been controversy in the past few years if the patent system has given patent holders too many rights, which became a problem.  Recently, the Supreme Court has decided in a recent case involving the discovery of the BRCA1 and BRCA2 genes that the rights of patent holders needed to be reigned in and for the the law to protect people developing new technology. 

David Berry

David Berry

Professor David Berry, of the Thomas M. Cooley Law School, says that in earlier cases, the Supreme Court has had a difficult time drawing a line as to what things should be eligible for patenting and what shouldn't.  In this case, he says, the Supreme Court understood the patent well enough that it could establish a pretty specific rule.  It said that genetic material that is isolated from the human body but still retains all of the physical characteristics in the body are not patentable.  They are considered "products of nature," and no one should be able to control them, adds Berry of the decision.  Further, if there are variations of those genes that are manipulated and changed chemically, then someone can obtain a patent on those.

Berry says that it's never been the case that you get a patent just because you invested a lot of money in research and development - one needs to meet specific requirements in the patent act. 

Going forward, Berry says, is that companies that have relied on getting patents on the genes themselves will now have to change their strategy as to how they're going to protect the technology. 

Berry doesn't think that people are going to shy away from investing just because of this decision but it will change their strategies for obtaining patents.  They may protect these technologies as trade secrets instead, for example, so they don't have to worry about questions as to whether the patents are valid or not, Berry explains. 

Berry sees this ruling being applied to other technologies that are based on human material proteins that have been modified to some extent.  He notes that the Supreme Court establishes broad principles and it's up to the lower courts, in this case the patent office, to apply it to specific technologies. 

David Berry is a Professor at Thomas M. Cooley Law School and spoke with The Legal Broadcast Network during this interview, providing online, on-demand legal video content.