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The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

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Traders on Wall Street | 545 comments | Create New Account
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cDNA
Authored by: hardmath on Thursday, June 13 2013 @ 12:39 PM EDT
cDNA or "complementary" DNA is man-made, starting from mRNA or "messenger" RNA and working backward to synthesize a DNA strand that lacks naturally (naturally occurring sections that are not expressed). This sort of manufactured gene is useful when you want a prokaryotic organism like yeast to express a eukaryotic trait such as insulin.

It would not conflict with genetic testing as brought up in this case.

---
Rosser's trick: "For every proof of me, there is a shorter proof of my negation".

[ Reply to This | Parent | # ]

cDNA should be un-patentable for a different reason
Authored by: Anonymous on Thursday, June 13 2013 @ 12:46 PM EDT
Creation of cDNA as a probe for a given gene should be rejected as obvious to
any skilled practitioner of the art. Once you realise you can create cDNA
probes
for one gene, applying it to any other gene is obvious and a standard technique.

[ Reply to This | Parent | # ]

5.4.3.2.1...
Authored by: hAckz0r on Thursday, June 13 2013 @ 12:56 PM EDT
Let me get this straight. You can't patent DNA, but you can use DNA to create RNA, and then use that RNA to create DNA from it, and patent that new DNA? Ok make sense, in a politically motivated money hoarding kind of way.

From a Science perspective you might as well have just patented the DNA sequence to begin with. What the cDNA seems to provide is the duplication of the original DNA sequence for doing a mass-production in a pharmaceutical context. That cDNA process may eliminate some non-coding sequences that got edited out by the natural process but the cDNA will be functionally the same in coding the same functional proteins. As I see it, only new and original sequences should be patentable, based on creating a customized protein sequence that does not exist in nature.

In that sense, it's the protein that should be patented, not the method used to encode that protein. In industry, when you invent a new tool, do you patent the tool, or do you patent 'the mould that makes the tool'? You patent the tool! Patenting the cDNA is an end-run-around to patent 'the genetic sequence' (e.g. the mould) rather than the protein (the tool). If the protein is itself found in nature then none of it (cDNA/DNA/RNA/mRNA) should be patentable. Those are all just different expressions of the same mould that makes the protein.

---
The Investors IP Law: The future health of a Corporation is measured as the inverse of the number of IP lawsuits they are currently litigating.

[ Reply to This | Parent | # ]

cDNA
Authored by: frederik on Thursday, June 13 2013 @ 01:19 PM EDT
  • Gene [DNA with introns]
  • transcription to mRNA [natural process that copies genetic information and removes introns]
  • mRNA [naturally occurring in the cell]
  • standard laboratory procedure that copies the information from the mRNA into DNA
  • cDNA

It takes creativity and effort to find the right gene and sequence it. The result is information, most of which is the identity of the gene, its sequence, and the sequence and relevance of mutations. Gene sequences are products of nature and not patentable according to the decision.

It takes creativity and effort to make cDNA copies of mRNA, find the right one, and sequence it. Still, mRNA is a naturally made and occurring copy of information from DNA. cDNA is just a lab-made copy of the information of that mRNA. What makes a particular cDNA unique is the sequence, ie the information that comes from the mRNA template. I fail to see the distinction.

If the invention is to construct a piece of DNA using the information from eg BRCA1 and other information to make a new unique molecule that does something novel, I can see that this can be protected. I fail to see how a patent on such a molecule could possibly extend to the naturally occurring sequences that are part of the molecule.

Copyright seems like a much suitable realm for protecting the molecule. The molecule is made up of As, Cs, Gs, Ts (like letters or words). The only thing that makes it unique is the specific arrangement of As, Cs, Gs, Ts. The dispute would then be if someone "plagiarized" the molecule. That would have to be determined with an abstraction/filtration process disregarding all parts that are naturally occurring sequences.

For BRCA1, the cDNA part is a copy of naturally occurring mRNA and should not be protectable. A molecule (eg plasmid) that has contains such cDNA as well as modifications to produce eg a useful protein could be protected with copyright. Using the exact same molecule in its entirety would violate copyright. However, anyone would be free to make another molecule for producing the gene product in bacteria using the same BRCA1 sequence (naturally occurring information), but not the other parts in a different construct.

In the end, this is all about genetic information. Why would it patentable in mRNA form (as copied to cDNA via a standard process) when it is not patentable in DNA/Gene form?

[ Reply to This | Parent | # ]

cDNA
Authored by: tknarr on Thursday, June 13 2013 @ 01:36 PM EDT

Footnote 9. They don't say cDNA is patentable, only that they aren't deciding whether it is or not. If someone claimed to patent it, I'd say the ruling itself would apply: if the cDNA were present in nature or derivable from natural mDNA by simple application of well-known techniques that any PHOSITA would immediately think to apply in that way, then it'd fall under exactly the logic of this ruling and be unpatentable.

[ Reply to This | Parent | # ]

cDNA - common law problem
Authored by: Anonymous on Thursday, June 13 2013 @ 02:07 PM EDT
I recall that a farmer was sued for a DNA patent violation because modified
grain from the field next door infiltrated his property. How is this any
different from the case where the neighbor's fruit tree hangs across the
property line? These gene modified products will get released to the
environment and become part of the environment. Once that has happened, don't
they become part of nature? Is using that material acquired that way any
different than picking wild mushrooms? It seems that under the common law, a DNA
patent holder looses enforceability once he looses physical control of his
creation like that.

[ Reply to This | Parent | # ]

cDNA
Authored by: overshoot on Thursday, June 13 2013 @ 03:33 PM EDT
They can still patent cDNA.
So I can patent anything that I can acronym to cDNA? This could be a fun game. Or, of course, lower courts could be faced with the fact that the process followed by one of the parties before them does not match the process that the Supreme Court described in its ruling. At which point all sorts of legal fun ensues.

[ Reply to This | Parent | # ]

cDNA - doesn't change function
Authored by: Anonymous on Thursday, June 13 2013 @ 05:55 PM EDT
Isn't the principle supporting the patent on isolation actually the claim that
isolation changes the function? If cDNA is the same information without
non-coding portions... it's the same DNA for the same function.

[ Reply to This | Parent | # ]

cDNA may or may not be patent eligible
Authored by: jjs on Thursday, June 13 2013 @ 08:26 PM EDT
While the Supremes apparently declared cDNA is not
ineligible for patent under 101, from the footnote, they
make no decision as to whether other parts of patent law may
make it ineligible for patenting. Unfortunately, that
probably means (an)other court case(s) to cover 102, 103,
and
112 eligibility.

"We express no opinion whether cDNA satisfies the other
statutory requirements of patentability. See, e.g., 35 U. S.
C. ยงยง102, 103, and 112; Brief for United States as Amicus
Curiae 19, n. 5."

---
(Note IANAL, I don't play one on TV, etc, consult a practicing attorney, etc,
etc)

[ Reply to This | Parent | # ]

Traders on Wall Street
Authored by: SirHumphrey on Thursday, June 13 2013 @ 11:29 PM EDT
It's a pity people can't read the writing on that Wall.

I remember a saying, which I can't find on the net, but it goes like this...

"A scientist will draw a line through 3 points, an architect will draw a
line through 2 points, but only an economist would draw a line through 1
point!"

[ Reply to This | Parent | # ]

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