Abstract

Advances in genomics research have called forth new strategies for patenting DNA sequences. Gene patenting, which began inconspicuously in the early days of the biotechnology industry in the 1970s and 1980s, did not generate significant public controversy until the advent of high-throughput DNA sequencing in the 1990s. By this point, it was such a well-established practice that categorical challenges to the patentability of DNA seemed quaint and out of touch. Yet something was plainly different. In the early days, patenting genes looked like patenting drugs. By the early 1990s, it looked more like patenting scientific information. We have a reasonably clear story about why we should issue patents on drugs; the case for issuing patents on scientific information is less clear. Patents on research discoveries arising far upstream from end-product development threaten the interests of research scientists, who fear impediments to the free use and dissemination of new discoveries, and of downstream product developers, who fear that they will be foreclosed from pursuing certain research and development (R&D) pathways or that their profits will be diluted by the claims of upstream predecessors. At the same time, it is not obvious how upstream patent owners might use patents to capture the value that their discoveries contribute to downstream product development, particularly in the face of concerted resistance to sharing the wealth. This strategic challenge is leading upstream innovators to pursue novel patent claiming and licensing approaches that raise unresolved doctrinal and policy questions.