Appeal No. 2005-0731 Page 23
Application No. 09/974,712
which requires that a patentable invention also be useful and fully enabled, nor is it the
standard that has been consistently applied by the courts.
In addition, the flood of DNA patents that would result from adoption of
Appellants’ rule could doom the potential contribution of microarrays to biological
research. Appellants argue that “[g]iven the widespread utility of such ‘gene chip’
methods using public domain gene sequence information, there can be little doubt that
the use of the presently described novel sequences would have great utility in such
DNA chip applications.” Appeal Brief, page 19. “[T]here is an entire industry based on
the use of gene sequences or fragments thereof in a gene chip format.” Page 20.
The practical effect of Appellants’ utility standard, however, would be that making
a microarray with 1000 genes represented on it would require investigating each of the
DNA sequences (and subsequences) on the gene chip to ensure that it was not the
subject of someone else’s patent. For each of the DNAs that was the subject of
someone else’s patent claim, a license would have to be negotiated – potentially
thousands of such negotiations for the finished product. These transaction costs would
have to be incurred for each new product that an aspiring gene chip manufacturer
wished to market. The industry gridlock likely to result has been termed a “tragedy of
the anticommons:”
By conferring monopolies in discoveries, patents necessarily increase
prices and restrict use—a cost society pays to motivate invention and
disclosure. The tragedy of the anticommons refers to the more complex
obstacles that arise when a user needs access to multiple patented inputs
to create a single useful product. Each upstream patent allows its owner
to set up another tollbooth on the road to product development, adding to
the cost and slowing the pace of downstream biomedical innovation.
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