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. Schmeiser, 1 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. USPTO, 702 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.