Other eligibility filters won’t stop gene patenting
Christopher Coons and Richard Blaylock, 2024 – *US Senator and **partner with the law firm Pillsbury Winthrop Shaw Pittman LLP and have been a practicing intellectual property attorney. Senate Judiciary Subcommittee on Intellectual Property Holds Hearing on Patent Eligibility Restoration Act, Hearing Transcript, 1/24, proquest Congressional, accessed via University of Michigan //DH
Note: biomarkers include genes – that’s what this testimony is about
CHRISTOPHER COONS: Mr. Blaylock, you've testified PERA would impose, effectively, no limits on the patenting of genes and other natural materials. What about the other sections of the Patent Act of 102, 103, addressing novelty, non-obviousness and the like, as Mr. Johnson suggested. Wouldn't those finer filters to patentability work to avoid the harms that you flagged in your testimony?
RICHARD BLAYLOCK: No, Senator, they would not. This is the reason why I concentrated on the concept of biomarkers. These are -- the biomarkers I'm talking about are being discovered, every day. They are therefore new and non-obvious. And so -- and it is easy to describe them and how to, you know, enable someone to use them and even to describe the best mode for their implementation.
So the -- so the rest of the requirements for patentability are real and important to the patent system, but they do not address the concern that PERA would change the current environment and make the patenting of information of knowledge about an association between a particular genetic anomaly and a -- in its clinical significance.
Because what would be patented would be merely the use of conventional everyday techniques such as aluminums based next generation sequencing or old style Sanger sequencing, in order to detect that information. It is -- so, in short, unfortunately, PERA would make a dramatic change.