Team:UCSF/Human Practices

Patents and iGEM

In the course of studying how to manipulate gene expression by targeting heterochromatin, we came upon an interesting patent owned by Sangamo Biosciences (Richmond, CA):  Modulation of Gene Expression Using Localization Domains (Wolffe A., et al. US Patent 6,919,204 B2).  The broad claims of this patent encompass:

“methods and compositions for regulating gene expression.  In particular, methods and compositions comprising localization domains, and fusions of localization domains with DNA binding domains and, optionally regulatory domains.”

Would our synthetic chromatin project fall under this definition?

Sangamo is best known for developing technology to generate customized DNA binding domains—zinc-finger proteins that can be targeted to anywhere in the genome. Indeed, Sangamo’s iron-clad IP protection was highlighted in a recent Nature news and views discussing proprietary vs. open source customized zinc-fingers (“The Fate of Fingers”, September 2008). 

Would the Sangamo “Modulation…” patent discourage others from working on developing new methods in the area of gene expression control?  This possibility led us to think about patents in general, and what they mean for Synthetic Biology.

First, why do we need patents?

Patents provide an incentive to innovate by guaranteeing the inventor sole rights to his/her invention for a set period of time Furthermore, patents require public disclosure, which benefits everyone after the patent period expires. Compare this to a trade secret—the public may never know the exact formulation of Coca Cola.

However, patents could be detrimental to the public if they are too broad in scope.  If another person without rights to the patent wants to innovate and further develop an idea the incentive to innovate is deterred by having to ‘pay-to-play.’  Worse yet, there are ‘patent-trolls’ that accumulate or file a blizzard of anticipatory patents that can then be used to hold legitimate innovators hostage.

The original patent troll: http://www.youtube.com/watch?v=lOGoZFzHkhs

How does this relate to Synthetic Biology? The iGEM ideal is Open Source: a community sharing parts, devices, systems, and ideas. BioBricks are the best example of this spirit. 

But what does this mean in regard to patent law?  In other words, could a Biobricked device be patented?  Should we allow this, or should a device made from open source parts not be ‘patentable?’

Further research led me to a page in the openwetware legal archive:

“1. You are free to modify, improve, and use all BioBrick parts, in systems with other BioBricks parts or non-BioBrick genetic material.

2. If you release a product, commercially or otherwise, that contains BioBrick parts or was produced using BioBrick parts, then you must make freely available the information about all BioBrick parts used in the product, or in producing the product, both for preexisting BioBrick parts and any new or improved BioBrick parts. You do not need to release information about any non-BioBrick material used in the system.

3. By using BioBrick parts, you agree to not encumber the use of BioBrick parts, individually or in combination, by others. “

I fully agree with these statements.  Open source parts that are further developed should be ‘patentable’ whereas the original parts used must remain open source.  However, this begs the question as to how open source Biobricked parts really are. Who really owns the open source part? An employee generally agrees to give the University or Company full ownership over all things made and invented in their lab. In other words, what if the University owner hasn't given permission? This could be a controversial issue for the Registry as the field of synthetic biology moves forward. At minimum, it seems that common sense dictates patents should never interfere with academic research. Could there be some sort of exemption for use of parts in the absence of commercial intent?

--Jimmy Huang