Genetic innovation and the public interest: trade secrets or full disclosure?
Tim Wilson, Director of the IP and Free Trade Unit at the Institute of Public Affairs, shares his opinion on Australian patent law and its applicability to genetic technologies.
Despite a Senate Inquiry into the subject matter, the case to
differently treat the patentability of genes under Australian
intellectual property law hasn't been made.
Currently the Senate Community Affairs Committee is completing
its Inquiry into Gene Patents. And due to the
volume of evidence, the technical nature of the subject matter and
relevant overseas court cases the inquiry is not due to deliver its
report on the future of Australian gene patenting law until
September this year.
The Inquiry was prompted by ANU academic, Luigi Palombi's,
approaches to NSW Liberal Senator, Bill Heffernan, over concerns
about current patent laws and how they may limit access to
technologies resulting from genes.
Innovation still requires meeting the
test of patentability by being new, inventive and usable.
A gene that already exists in nature doesn't meet these steps and
any patent application would be rejected by IP Australia.
But before the Inquiry recommends changes to Australia's patent
laws opponents of the system need to substantiate that there is a
problem in the first place.
Currently an innovator can patent the means for isolating a gene
outside of the human body. An innovator can patent an artificially
created gene. An innovator may be able to patent an innovative use
for a gene. And an innovator may be able to patent a gene isolated
outside of its natural environment.
But to do so the innovation still requires meeting the test of
patentability by being new, inventive and usable. Without meeting
this test a patent would not be granted. A gene that already exists
in nature doesn't meet these steps and any patent application would
be rejected by IP Australia. Just like any other innovation.
And arguing that patents are limiting further innovation and
access to the derivatives of innovations also hasn't been
demonstrated.
The objective of intellectual property is to promote innovation
by affording property rights to an innovator. By providing property
rights through a patent the owner enjoys a temporary exclusive
right to exploit their innovation by either commercialising it
themselves and/or licensing it to others for commercial gain.
And to avoid patent owners unnecessarily limiting access to
their technologies courts can forcefully grant licenses to third
parties for a license fee.
But compulsory licensing is rare because most innovators like to
diffuse their technologies so they can recoup costs and make a
profit. The very incentive of a patent is to diffuse access, not
keep it isolated and secret.
But the reverse is the case for innovations if patents aren't
provided.
Without a patent, innovators rely on "trade secrets" to protect
their technology. And the emphasis has to be put on
"secrets". With only the protection of a trade secret, innovations
may be commercialised but the capacity for understanding how it was
made remains secret unless it can successfully be reverse
engineered.
Patents operate in the reverse because patent applications come
with the requirement that the details of an innovation must be
disclosed. The intent of disclosure is to provide limitations on
the claims of an innovation and to ensure that a patent isn't
falsely awarded. But disclosure also delivers the benefit of
pushing the patented innovation and its design into the public
domain.
Once it is in the public domain others can learn from the
innovation and use it to make further scientific advances.
Critics of gene patenting have also highlighted that the
benefits of genetic research will be limited if gene patenting
continues. But unless the innovation occurs in the first place the
derivatives will never exist and nor will the innovations that
compound from these technologies.
Considering the sensitivity of gene patenting there is merit in
ensuring Australian patent law is continuing to serve the public
benefit of promoting innovation.
But currently the burden of evidence to change the law rests on
those who would like to limit patenting parameters. Because it
doesn't appear that the current laws are failing.
About the author: Tim Wilson
Tim Wilson is the Director of the Intellectual Property and Free
Trade Unit at the
Institute of Public Affairs. Tim has worked as a Trade and
Senior Communication Consultant for ITS Global and SDA Strategic,
and as a Project Manager (Development) for the Australian APEC
Study Centre. He has also advised state and federal MPs.
Tim has a Masters of Diplomacy and Trade and a Bachelor of Arts
from Monash University. He has also studied IP at the WIPO Academy;
and Global Health Diplomacy and the WTO, International Trade and
Development at the Institut de Hautes Études Internationales et du
Développment. Tim is a member of DFAT's IP Industry Consultative
Group. In 2009 he was recognised by The Australian newspaper as one
of the ten emerging leaders of Australian society.
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