Does patenting alienate customers? 23andme gets first US patent.

This Kat’s attention has just been drawn to the announcement by the US company 23andme of the issuance of its first US patent US 8187811, and to subsequent comment, mostly adverse.  In particular the IPKat was invited to review this thoughtful comment piece on the Genomics Law Report. The situation raises interesting questions on company policy concerning the acquisition and deployment of intellectual property rights, the image of a company, and drawing conclusions from other people’s patents.

For those who, like the IPKat, had never heard of 23andme before, the company offers to sequence your genome and tell you about its implications for your ancestry and health.  It has created a community of its subscribers and, apparently by questioning its subscribers, has found new links between genomic markers and certain diseases.

The patent that has led to the controversy relates to correlating a certain allele (genetic variant) with an increased risk of developing Parkinson’s Disease.  When the issuance of the patent was announced on the company blog on 28 May 2012, a large number of comments were posted from customers who were surprised and/or angry that information that they had provided had been used to make an invention that the company had patented.

The company post contained reassuring generalities:

We believe patents should not be used to obstruct research or prevent individuals from knowing what’s in their genome. We believe that everyone has a right to know their genomes — their sequence of As, Ts, Cs, and Gs — and should be able to access them should they want to.  This has been our guiding principle since day one, and 23andMe has pioneered the ability for individuals to have unfettered access to their genomes. 

We want to emphasize that we are firm in our belief that individuals should have access to their own genetic data. We will continue to pursue patents that we believe will eventually benefit us all. The majority of our customers have opted to participate in research. Thanks to that community, we have been able to make an incredible number of novel discoveries. We want those discoveries to move from the realm of academic publishing to the world of impacting lives by preventing, treating or curing disease.

However, there was no clear statement as to the purpose of the patent, or any commitment to licence on specified terms in specified situations.

Domestic cat
genome here

It seems that some customers and commentators may have seen a parallel between open source software and crowdsourced genetic information.  In the open source software movement, it is clear from the outset what the IP licence terms will be.  Some companies have recently gone further than this – for example Twitter recently announced that its patents would only be used defensively.  It is clear that some customers and commentators felt that in 2012 23andme should have been able to provide similar clarity from the outset.  Since such clarity was not provided, they were upset.  However the IPKat wonders whether in such a new business model any such clarity could be realistic at this stage.

The comment in the Genomics Law Report sought to draw comfort from the fact that the patent had been narrowed during prosecution from what had originally been applied for.  This was taken as evidence that the examination system was working, and that the Myriad decision of the CAFC and the Prometheus decision of the Supreme Court had been applied.

Both the Myriad and Prometheus opinions discussed above were published subsequent to the filing of 23andMe’s patent application in November 2010, and there should be little doubt that each played a role in the PTO’s review and narrowing of the PD-related claims 23andMe initially sought.

This is however not correct.  Review of the actual prosecution history shows that the narrowing of the claims was for reasons of restriction practice (a formal procedure designed to limit a patent to a single invention) and nothing to do with substantive patentability.  In fact, there was no really substantive objection.  Further, the Notice of Allowance was issued before the Supreme Court decision in Prometheus.  As a patentee, 23andme would routinely have already filed a continuation application 13/452,341 (filed on 04-20-2012).  Therefore, the issuance of one or more further patents is to be expected.

This raises the interesting issue of whether it is wise to comment on a patent, in particular a patent that one might not thoroughly approve of, while there is a pending continuation application.   The effect of the comment might be to encourage the patentee to strengthen its position in a way that it might not have thought of.

This Kat is not the Amerikat and is not a US attorney, but to his European eye the claims in US 8187811 in fact seem precisely the type that might be in trouble following the extraordinary Supreme Court decision in Prometheus (and he shares the reservations expressed by his fellow feline in the post at the time).

As 23andme has apparently still not developed a profit-making business model, it will be interesting to see how both the company and its IP policy develop in the future.  It will also be interesting to see how they keep their customers supportive of what they are doing.

A katpat to Chris Torrero for fishing up this link,