Document Type

Article

Publication Title

University of Chicago Law School Roundtable

Abstract

Professor Rebecca Eisenberg has provided us with an exhaustive and useful account of the recent dispute over patent protection for large-scale complementary DNA ("cDNA") sequencing. Stripped to its essentials, the dispute arose as follows. Scientists at the National Institute of Neurological Diseases and Stroke developed the initial techniques for the discovery of cDNA sequences and the ability to isolate certain "expressed sequence tags" ("ESTs") within the cDNA sequences. These gene tags permit investigators to identify the larger active DNA strands of which they are a part and provide information that might be used to develop drugs and other end products that, if successful, could command a handsome return in the marketplace. No one doubts, I think, that any novel processes used to isolate these gene tags are entitled to receive patent protection. But researchers also sought patent protection for the non-"junk DNA" tags themselves, even though their exact functions were not clearly established. In the end, these patent applications were rejected. Our post mortem, therefore, must consider the implications of this incident for future applications. While I make no strong claim to expertise on patent law, I yield to no one in my enthusiasm for the institution of private property. Notwithstanding the latter and perhaps because of the former, I am puzzled as to why Professor Eisenberg hesitates to condemn these claims. I can hardly conceive of a weaker case for patent protection than this one. To outline the reasoning behind this conclusion, I shall divide my response into two parts. Part I gives a quick overview of the rules governing the acquisition of property rights both in things and inventions. Part II applies the principles behind property rights to the cDNA dispute.

First Page

575

Volume

3

Publication Date

1996

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