It's Unanimous: Natural DNA Is Not Patentable

Matt Berman and Matt Vasilogambros
June 13, 2013

The Supreme Court on Thursday unanimously ruled that human DNA cannot be patented.

Synthetic DNA, unlike naturally occurring DNA, can be patented, however. Isolating the gene and altering it, the court found, does not allow the company to patent the gene.

Utah-based Myriad, which holds two gene patents for breast and ovarian cancer, argued that the extracted human genes were chemically altered and therefor distinct and patentable.

You can read the court's opinion, written by Justice Clarence Thomas, here. Justice Antonin Scalia joined in part and filed a concurring opinion.

Thomas notes that there is always a "delicate balance" when discussing patents:

The rule against patents on naturally occurring things has limits, however. Patent protection strikes a delicate balance between creating "incentives that lead to creation, invention, and discovery" and "imped[ing] the flow of information that might permit, indeed spur, invention."

Hard work, Thomas writes, does not mean the company deserves a patent:

In this case, by contrast, Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.

In arguing the case, Myriad may have focused on the wrong part of genome science:

Nor are Myriad's claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule. Myriad's claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA.

Myriad's process of manipulating the genes for breast and ovarian cancers (BRCA1 and 2) was not unique:

Had Myriad created an innovative method of manipulating genes while searching for the BRCA1 and BRCA2 genes, it could possibly have sought a method patent. But the processes used by Myriad to isolate DNA were well understood by geneticists at the time of Myriad's patents "were well understood, widely used, and fairly uniform insofar as any scientist engaged in the search for a gene would likely have utilized a similar approach," 702 F. Supp. 2d, at 202–203, and are not at issue in this case.

At the end, Thomas adds a word of caution, writing that the issue isn't quite over:

Nor do we consider the patentability of DNA in which the order of the naturally occurring nucleotides has been altered. Scientific alteration of the genetic code presents a different inquiry, and we express no opinion about the application of §101 to such endeavors. We merely hold that genes and the information they encode are not patent eligible under §101 simply because they have been isolated from the surrounding genetic material.

What more do you need to know about this relatively quick, surprisingly unanimous decision? Here are some of the better quick takes:


"…genes and the information they encode are not patent eligible… because they have not been isolated from the surrounding genetic material."

— Ryan J. Reilly (@ryanjreilly) June 13, 2013



— Jamelle Bouie (@jbouie) June 13, 2013

Good news, everyone. Your genes cannot be patented. (Cyborgs excepted.)

— Josh Greenman (@joshgreenman) June 13, 2013

That case emerged in part from an ACLU report that drew from sci-fi to imagine future threats to liberty…

— AdamSerwer (@AdamSerwer) June 13, 2013

#Myriad decision unanimous, which is a bit of a surprise. But ruling IS a compromise (some patentable, others not)

— Andrew Cohen (@CBSAndrew) June 13, 2013

SCOTUS rules: We own our genes! A great explainer:…

— Dafna Linzer (@DafnaLinzer) June 13, 2013

Everyone's yawning, but when Khan is killing us all with his synthetic DNA-enhanced powers, we'll look back at this #SCOTUS ruling.

— Ryan Teague Beckwith (@ryanbeckwith) June 13, 2013

Next #scotus decisions are Monday morning at 10am.

— Jeffrey Toobin (@JeffreyToobin) June 13, 2013

Last month, the Nobel laureate economist Joseph Stiglitz wrote about the possible economic implications of the case, and what it means about the U.S. patent system:

Normally, economists talk about trade-offs: weaker intellectual-property rights, it is argued, would undermine incentives to innovate. The irony here is that Myriad’s discovery would have been made in any case, owing to a publicly funded, international effort to decode the entire human genome that was a singular achievement of modern science. The social benefits of Myriad’s slightly earlier discovery have been dwarfed by the costs that its callous pursuit of profit has imposed.


More broadly, there is increasing recognition that the patent system, as currently designed, not only imposes untold social costs, but also fails to maximize innovation – as Myriad’s gene patents demonstrate. After all, Myriad did not invent the technologies used to analyze the genes. If these technologies had been patented, Myriad might not have made its discoveries. And its tight control of the use of its patents has inhibited the development by others of better and more accurate tests for the presence of the gene. The point is a simple one: All research is based on prior research. A poorly designed patent system – like the one we have now – can inhibit follow-on research.

The Supreme Court, of course, rejected Myriad's stance.