Volume 1, Issue 1, page 209
Recent court decisions examining the utility of expressed sequence tags, or ESTs, may change the manner in which some companies are able to investigate unknown genes. Limiting patentability of genetic research will only logically slow the innovation and understanding of genetic research. Consider the following hypothetical: SMALL, a biotech company, which during its research regarding a cure for disease XYZ, finds an EST that codes for a gene of no known function. Although its research shows this gene to have some “biological activity” with respect to XYZ, the company otherwise has no other leads. However, SMALL is aware that without knowing the underlying function of the gene for this EST, the claims for its patent must be extremely limited as defined by In re Fisher. SMALL decides to keep its research secret and continues to research in-house and not file a patent due to its claim to this EST being limited. Years later BIG, another biotech company, finds that XYZ is cured through the same gene which SMALL originally discovered but abandoned for lack of funds.