Mailbag for April 29, 2011

[Be sure to read the update to this post in Law and the Multiverse Retcon #1!]

We have another intellectual property question this week, this time about gene patents and Spider-Man.  As always, if you have questions or post suggestions, please send them to james@lawandthemultiverse.com and ryan@lawandthemultiverse.com or leave them in the comments.

@MrCrumley on Twitter asks: “Have you dealt w/ Spider-Man’s genetically modified dna & the similarities to Monsanto’s suits regarding GM corn?”  Here, MrCrumley is asking about Spider-Man’s origin in the 2002 film, in which he gains his powers from a genetically engineered spider’s bite rather than the traditional radioactive one.  There are a few different issues to consider here, including the patentability of genetically engineered organisms and the nature of gene patents.  First, a brief bit of factual background.

I. Monsanto and GM Crops

For those who don’t know, Monsanto is a large agricultural biotechnology company.  (As it happens the company’s headquarters is about two miles from James’s house).  In particular, it manufactures a wide variety of genetically engineered crops, herbicides, and especially crops that are resistant to those herbicides, thus allowing farmers to spray the herbicides on the crops, killing only the undesirable weeds.

Monsanto requires farmers who buy its seeds to sign an agreement that the farmers will not save and replant seeds from the patented crops, and Monsanto is not afraid to sue farmers who violate that agreement.  The company has sued 145 farmers in the United States, and 11 of those suits went to trial, each time ending in Monsanto’s favor.  This is somewhat unusual because patent infringement cases are generally filed against businesses rather than individual end users.

Perhaps the most controversial Monsanto case occurred in Canada: Monsanto Canada, Inc. v. Schmeiser1 S.C.R. 902 (2004).  In that case, the defendant farmer alleged that genetically engineered canola seeds had simply blown onto his fields, and so his subsequent saving and replanting of seeds should not be considered patent infringement.  Specifically, he argued that planting the seeds did not amount to an infringing use of the patented cells and genes.  The Supreme Court of Canada held otherwise.  However, we will focus on US law here.

The question, then, is this: assuming that the genetically engineered spiders were covered by one or more patents, could Spider-Man infringe those patents?

II. The Patentability of Genes and Genetically Modified Organisms

A threshold question is what, exactly, do we mean when we say that the spiders are covered by one or more patents.  People often talk about “gene patents,” but what exactly are they?  In the United States there are two main kinds of claims in gene patents: claims to genetically modified organisms and claims to DNA or proteins produced by DNA.

We should first note that the patentability of DNA sequences is currently the subject of a federal lawsuit, Ass’n for Molecular Pathology v. USPTO702 F.Supp.2d 181 (S.D.N.Y 2010) (presently on appeal to the Federal Circuit).  The suit could potentially invalidate all patents claiming an unaltered genetic sequence (i.e. a sequence as it appears in nature, even if the patent claims isolated, purified DNA).

The validity of claims to genetically modified organisms was first recognized in the landmark case Diamond v. Chakrabarty, 447 U.S. 303 (1980).  Although the Chakrabarty case involved a genetically modified bacterium, the Patent Office and the courts have subsequently recognized the validity of patents claiming multi-cellular organisms, including animals.  So presumably a genetically modified spider could be patented.  However, a human couldn’t infringe claims to a genetically modified spider, since, well, a human is not a spider.

So what about claims to the DNA itself?  Claims to DNA generally take the form of “Purified and isolated DNA, wherein the DNA molecule has a nucleotide sequence as set forth in Fig. 1″ or “A purified and isolated protein, as an expression product of a transformed host cell containing a DNA molecule coding for the protein, the DNA molecule having a nucleotide sequence as set forth in Fig. 1.”  As you can see, these kinds of claims require a purified, isolated form of DNA, which is not the natural state for DNA in the body, and so Spider-Man wouldn’t infringe such a claim.

Even the second example, a purified and isolated protein (such as the proteins that make up spider silk), wouldn’t apply because spider silk is made up of several proteins.  But one could imagine a patent claiming spider silk produced by a genetically modified organism having a particular DNA sequence.  In fact, a patent application claiming a genetically modified silkworm that produces spider silk was filed in 2010.  So could a patent like that spell trouble for Spider-Man?

We think not.  The patent would likely have to claim a genetically modified spider or another specific organism (e.g. a silkworm or, believe it or not, a goat), which of course would not apply to a human.  A patent that tried to claim a broad class of organisms (e.g. mammals) modified to produce spider silk would be invalid for lack of enablement unless the patent “contain[ed] a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”  35 USC 112.  Since genetic engineering is a fairly complex and difficult process, it is unlikely that a patent could describe a general process for modifying organisms to produce spider silk.

The only way Spider-Man could infringe the patent, then, is if it specifically claimed and described a genetically modified human that produced spider silk.  There is no evidence, however, that the scientists in the movie had developed a way to modify a human in that way, and furthermore it is likely that the Fifth and Fourteenth amendments would forbid claims that covered genetically modified humans.  Just for starters, a patent could not grant someone the right to exclude another human from reproducing because the Constitution protects “personal decisions relating to … procreation.”  Planned Parenthood of Southeastern Pa. v. Casey, 505 U.S. 833, 851 (1992).  There would be other problems with, e.g, the unavoidability of infringement, since it would be difficult or impossible to cease infringing.

III. Conclusion

Spider-Man is almost certainly safe from a patent infringement suit.  Either the patents simply wouldn’t cover him or, if they did, they would be invalid for doing so.  This same analysis applies to pretty much any superpowered character whose abilities come from genetic mutations or modifications.  While gene patents may be controversial for many reasons, the threat of lawsuits against superheroes isn’t one of them.

That’s it for this week.  Keep your questions coming in!

24 Responses to Mailbag for April 29, 2011

  1. Melanie Koleini

    It’s been a long time since I’ve seen the movie, but as I recall, Parker did not let the spider bite him on purpose. Wasn’t he bitten as a result of negligence on the part of the spider’s creators?

    I’ll take your word for the lack of patent infringement. Working in the medical field, I know they allow some pretty idiotic patent enforcement decisions at times. I can image a lower court judge ordering Spider Man to pay the company a licensing fee.

    But the company that made the spider has bigger problems than possible patent infringement. Namely, a genetically modified organism they own has infected and impacted the health of a human. From a biological standpoint, this most like happened either through Parker being infected with a retrovirus or a macrophage contained in the spider venom.

    The FDA, EPA and possibly Department of Agriculture can fine them big time. I don’t know what state laws may have been broken. Parker would have grounds for an impressive lawsuit. Criminal charges aren’t common in cases of scientific negligence but the company could be driven bankrupt if the facts are publicly exposed.

    • So, yes, Parker could have a suit against the company, but what would the damages be? Gaining superpowers isn’t much of an injury. In the film his only damages would be from the spider bite itself (very minimal damages there) and the somewhat unsightly patches on his wrists where the webbing is produced. There might be a pain and suffering claim, but in the film he seems to handle the transformation pretty well.

      And all of that is assuming that it was even reasonably foreseeable that the bite would have the effects it did, and arguably it was not foreseeable. If it were foreseeable I suspect the scientists would have all gotten themselves bitten.

      And yes, Peter Parker gets attacked and injured all the time as Spider-Man, but that’s not the company’s fault. When Parker puts on a suit and knowingly exposes himself to unnecessary danger, the chain of causation is pretty well broken.

      • “With great power comes great responsibility.”

        It might be suggested at least in Peter Parker’s mind that the fact that the spider bite gave him superpowers means he has now has a duty that he didn’t before, and that the danger he exposes himself to is not “unnecessary”. It’s probably even true that a lot of people would reasonably think this way. Does this affect the chain of causation?

      • The biggest problem with this argument is that the superpowers themselves were an unforeseeable consequence of the spider bite, so the chain dies there. But let’s suppose it was foreseeable that a bite from one of the spiders would grant the victim superpowers.

        There are still at least three main counters to this line of reasoning. First, that becoming a superhero is not a foreseeable response to the development of superpowers, but let’s assume otherwise for now. Second, I think taking on the risks of being a superhero violates the plaintiff’s duty to mitigate damages. In other words, plaintiffs can’t intentionally run up the bill and then try to stick it to the defendant. Third, a lot of Spidey’s injuries are caused by the intentional misconduct of others (e.g. supervillains beating him up). Intentional torts are typically superseding causes that break the chain of causation.

        So it would take several leaps to get to the point that Parker could sue for injuries suffered ‘on the job,’ so to speak, and even then the company wouldn’t be liable for the worst of them.

  2. A lot of plants are hybridized. Usually in those cases the seeds from the modified crops are inferior.

    • They may be inferior in terms of yield but the issue is whether they still contain the patented gene. Apparently second-generation Round-up Ready™ crops are still glyphosate resistant.

  3. Couldn’t a case of Spider-man not being human anymore be made, thus negating his coverage?

    I mean, although accidentally – he has been genetically modified. It’s not even known if he is still fertile with a normal human female. There is of course no doubt about him being an intelligent, sentient being, but still human?

    • There are several reasons to think a court would say he is still human. First, the genetic differences seem pretty slight, in the grand scheme of things. Second, the mutations do not seem to have affected his mind (his senses, yes, but not his mind). Third, and perhaps most importantly, the mutation did not kill him, and arguably if you were born a person then you’re a person until you die, no matter what happens in the interim. So, for example, a person who, because of some trauma, enters a persistent vegetative state with no possible hope of recovery still has all the usual constitutional rights.

  4. Hmm. What about biological weapons? Surely they can be patented, right? If a patented strain of some contagious disease gets out and many people die, can the company that patented the strain claim that the victims were infringing their patent by making copies of the strain and passing it on to other victims? I imagine it is worth a try as the victims’ families would probably be preparing a lawsuit of their own. ;)

    • Considering the fact that the U.S is a signatory to different agreements banning the use of biological weapons* I’m not sure if it’s an issue and probably doesn’t fall under copyright. Additionally if a company tries to patent a strain of some virulent disease they’re probably breaking some law or other at the least. In any case they probably couldn’t sue anyway since they didn’t sell it to anyone and no one economically benefited from it. Indeed you’d be more likely to see the company hammered by lawsuits.

      *Admittedly in recent years we may have started to interpret it in a way not historically consistent but that’s not the point.

      • It would be a patent issue, not a copyright issue. And in fact a genetically modified virulent bacterium or virus may well be patentable. Historically inventions that are “injurious to the well-being, good policy, or sound morals of society” were unpatentable. Lowell v. Lewis, 15 F. Cas. 1018 (C.C.D.Mass.1817). As examples of such inventions, that case listed “a new invention to poison people, or to promote debauchery, or to facilitate private assassination.” Id. at 1019.

        However, the modern view is that the requirement that inventions be useful is a very low bar. So, for example, there are now patents on all manner of poisons, contraceptives and prophylactics, and sound-suppressed weapons, each of which runs counter to historical exclusions. Congress is free, however, to exclude specific technologies from patentability, as it has done with “any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” 42 USC 2181(a).

        “The threshold of utility is not high: An invention is “useful” under section 101 if it is capable of providing some identifiable benefit…. (“To violate § 101 the claimed device must be totally incapable of achieving a useful result”) … (test for utility is whether invention “is incapable of serving any beneficial end”).” Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366 (Fed.Cir.1999) (citations omitted). So as long as some beneficial end could be dreamed up for a virulent bacterium or virus (e.g. as a model organism for researching new treatments), it could be patentable.

    • So as discussed below I think they could be patented, at least arguably. However, no, I don’t think the company could claim infringement. Patent infringement is a strict liability offense, and so the infringer’s state of mind (i.e. whether they intended infringement) is immaterial, except that willful infringement can give rise to enhanced damages. In re Seagate Technology, LLC, 497 F. 3d 1360, 1368 (Fed.Cir. 2007). However, I think the allegedly infringing action must at least be a voluntary act, and I don’t think anyone would voluntarily make their body into an incubator for a biological weapon.

  5. One of they key pieces of evidence in Schmeiser, which is not made clear in the Wikipedia entry, is that he actually had a breeding facility in his barn. He was actively crossing and propagating plants with the Roundup Ready gene present. What was never made clear and was the (AIUI) the reason for the close vote what the source of the gene – accidental sowing or cross pollination, or deliberate theft of plants/seeds containing the gene. (He was not a signatory to any agreement with Monsanto IIRC.)

    • And a great many people are still inclined to give Schmeiser the benefit of the doubt on the accident/theft argument. Hence the continuing controversy, despite all court decisions to the contrary.

  6. Hm. Assuming that the company foresaw or later realized what they had in the spider – i.e., the ability to confer a specific suite of superpowers on individuals – could they a) patent the spider, and b) require those who purchase the service and product involved in getting bitten to acquire the treatment to agree to pay a royalty on any children they father/mother, on the basis that they are providing a good and service to their own offspring to which they do not have root rights? (Obviously, they couldn’t constrain the reproduction of such children, as such children could not be bound by contracts their parents signed before they were even born, and they couldn’t hold Spiderman to those terms, because attempting to would suddenly make “acquiring superpowers” a damages-inducing event in the form of legal troubles, but for those who voluntarily undergo the treatment…)

    • The answer to (a) is yes. As discussed in the post there’s no reason the company couldn’t patent the genetically modified spider, the particular substances in the venom that confer superpowers, and the treatment process. So the company could have the exclusive right to produce the spiders, their venom, and to give people powers via the spiders or their venom.

      The answer to (b) is no. First, the Constitution would likely prevent requiring payment in exchange for having a child. The parties could write up a contract, but the courts would refuse to enforce it. Second, at a bare minimum such a contract could only cover children that came into being during the term of the patent. Contractual terms tied to a patent license cannot extend past the term of the patent. Trying to do so renders the agreement unenforceable due to patent misuse. Brulotte v. Thys Co., 379 U.S. 29 (1964).

  7. Melanie Koleini

    “And all of that is assuming that it was even reasonably foreseeable that the bite would have the effects it did, and arguably it was not foreseeable.”

    I’ll grant that developing super powers from a spider bite was unforeseeable. HOVERVER, the spider’s creators ought to have known the spider venom contained an infectious agent. They should have been doing animal studies on the effects of spider venom on mammals. They ought to have known the infectious agent posed an unknown risk to humans.

    I don’t know the references for the regulations but the DEA, EPA, and FDA all have many, many regulations regarding the creation, storage, and transportation of biohazards. The spider venom would count as a hazard under current law, I don’t know about the law pre-9/11. The movie takes place in 2002, the laws weren’t as strictly enforced them, but they still existed. The regulations also require reporting the loss of the biohazard to the appropriate agencies within 30 days. Failure to follow these regulations is a crime, though as I said, people seldom if ever go to jail for it.

    If Peter Parker sued he would be entitled to free exhalative health monitoring for the rest of his life and possibly, any future children may also be entitled to screening. He would also be entitled to compensation for any health complications that could reasonably be related to the bite. Since Parker was the first person ever infected with the genetically modified organism, this means any new health problem he has for as long as he lives could conceivably be covered. This being the case, the company would probably try to settle with Parker to avoid the costs of litigation that could conceivably drag on for 50 years.

    “Peter Parker gets attacked and injured all the time as Spider-Man, but that’s not the company’s fault. When Parker puts on a suit and knowingly exposes himself to unnecessary danger.”
    You could make the augment that the infection suffered by Parker changed his judgment and made him more likely to take extreme risks. There is a class of drugs for Parkinson’s that can cause compulsive gambling while the person is taking it. After the person stops the drug, their judgment returns to normal. There are also many parasites that can directly effect behavior. Now, I don’t think that this is the case with Parker, but a good lawyer could make a convincing argument.

    The corporation that owned the spider would likely do whatever they could to get Parker to settle for a nominal amount of money and free health care provided by them (so they would have the data). They would, of course, demand a non-disclosure statement.

  8. Obviously it might be kind of a moot point in the movie example since it’s unclear in the spiders were under a patent anyway. Certainly GMOs have to be created and characterized first before anybody can think of patents, and I’d think the lack of a “Danger: Bite may cause cool mutation!” sign suggests a certain lack of characterization. Doubt you can patent human mutation anyway; speaking from the biology side of things (with a little experience in studying gene therapy) genetic alteration has patents pursued as a treatment method rather than some sort of “this gene is our gene” if memory serves. Granted that’s probably since all current experimental methods pretty much rely on restoring target genes to normal human sequence to cure genetic disorders, but I could see any sort of genetic “improvement” method getting the same approach. Patenting a actual gene inside a human, altered or not, kinda pushes the “people as property” line a bit, especially since they can’t just yank the DNA in question out again. So if they had patented a “get a spider bite for powers” method Peter might be in trouble if he’d deliberately gotten bitten, but as his exposure was accidental I doubt you could say he stole a patented genetic treatment method.

    As for Peter suing them, I suppose if they went with the “spider bite causes him to grow extra arms eventually” thing I recall from somewhere (might have been a cartoon though, seem to recall it happened differently in comics) he’d have a dandy cause for claiming damages.

    • The extra arms thing was actually the result of a botched attempt by Peter Parker to undo his mutation, so I don’t think that would count, although it brings up an interesting point.

      Ordinarily, a tort defendant is liable for all foreseeable damages, and it’s foreseeable both that someone would seek medical treatment and that negligence would occur in the course of that treatment, causing further harm (obviously the negligent health care provider can be sued, too, although only a single recovery is permitted). However, in this case I think Spider-Man’s lack of medical knowledge and experience as well as the extremely experimental nature of the attempted cure rise to the level of recklessness. His choice to self-medicate rather than seek proper medical attention may also implicate the plaintiff’s duty to mitigate damages. So I don’t think he could claim the ‘six arms’ incident as additional damages.

  9. I have a question. In V2, Issue 4 of Fallen Angel, there is a court case that interested me. The defendant, a child-molester and killer, raped and murdered a small girl (whom the Fallen Angel, prior to her Fall, was guarding). Although he was arrested by the police, the judge found that the police didn’t have grounds for a search and – therefore – all the evidence was inadmissible in court. The defendant, although he was as guilty as sin (and the Angel agreed, killing him in a Spectre-like moment), was therefore acquitted of all charges.

    What I want to know is if that is actually realistic. Yes, the cops overreached themselves and should be slapped on the wrist for it, but the man killed a child! It isn’t something minor, is it? Why the hell was he allowed to walk? (If legal.)
    Chris

    • The actual law guys should answer this, but my guess is that the judge could call a mistrial and the DA would have to resubmit the charges and retry the case using evidence not obtained illegally.

    • Chris, you have two concerns here that are related but distinct. The first is the evidence itself. U.S. courts have always been pretty consistent that evidence obtained illegally by law enforcement cannot be used in a criminal trial, so there’s no surprise here. The rules of evidence are designed to help protect defendants from possible police misconduct. Police can’t just kick down doors looking to see if someone is a criminal. They have to have a valid warrant, probable cause, etc. If they didn’t, then anything obtained illegally is “fruit of the poisonous tree” and is inadmissible.

      The second one is what happened to the defendant. There are a few options here.

      In an ideal world, here’s what should happen: The prosecutor realizes they are not going to be able to use the best part of their evidence (this would/should be determined in pre-trial motions). At that point they decide not to proceed with the trial. There’s no mistrial as such, the trial just doesn’t occur. This allows them time to (hopefully) obtain new evidence and refile the charges at a later date.

      If he was actually acquitted, then despite the evidence being ruled inadmissible the prosecutor decided to prosecute the case. He lost and a jury found the defendant “Not guilty” (or, less likely, the judge granted the defense’s motion to dismiss after the prosecution’s case rested). In either event the defendant had his day in court and successfully won. Note that this might have happened even with the evidence having been admitted. You never know how a jury will decide to go.

      A mistrial might occur IF it came out during the actual trial itself that the evidence was illegally obtained. This seems unlikely, as the evidence was the result of the search and it was the search itself that was challenged, so this should have been determined during pre-trial motions. More likely, the mistrial would be possible if the prosecutor kept referring to evidence that had already been ruled inadmissible and the judge decided that this tainted the jury to a point where a fair and impartial verdict was no longer possible (this would also get the prosecutor in trouble).

  10. Depending on the economic value of the venom as a whole or specific components (perhaps specificly the stuff that transplants spider genes, or the gene bits themselves) could Peter be accused of stealing the material? (if those droplets the spider injected, even though physicly tiny, were actually worth thousands of dollars or somthing like that)

  11. Pingback: The Amazing Spider-Man: Background | Law and the Multiverse

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