A U.S. District Court judge has ruled that patents can’t be obtained for genetic events that occur naturally in dogs.
The decision by Minneapolis Judge John R. Tunheim on March 31 means Spokane-based Paw Print Genetics can continue genetic dog screening without fear of violating patents. The decision is in line with two previous rulings made by the U.S. Supreme Court in 2012 and 2013.
At specific issue is a genetic mutation that occurs in some dogs called exercise-induced collapse (EIC), which causes dogs to lose control of their legs after vigorous activity. A St. Paul, Minn.-based company, Canine EIC Genetics LLC, had secured a patent that identifies the mutation and lists eight features, which all describe slightly different methods for detecting whether a dog has the mutation, Tunheim wrote in his 30-page decision.
Paw Print Genetics founder and CEO Lisa Shaffer says the company filed a formal complaint against Canine EIC Genetics in December 2013. The case wasn’t heard by the judge until a year later, she says.
Shaffer says she’s elated with the decision.
“You can’t patent the oak tree that’s in your front yard,” Shaffer says.
Tunheim wrote in his decision that because the Canine EIC patent “is directed at a natural law and because it doesn’t introduce any additional concept beyond well understood, routine, and conventional methods for determining whether the EIC mutation exists in a dog, the Court will find that the patent is invalid and will grant Paw Print Genetics a motion for partial summary judgment.”
Separately, Paw Print Genetics debuted at the beginning of this month a new consumer product called Canine HealthCheck. The company previously has offered breed-specific genetic testing to breeders and veterinarians. Now, individual owners can purchase a kit to have their dogs screened for more than 150 different genetic disorders, Shaffer says.
Paw Print Genetics is also working with Spokane County Regional Animal Protection Service on a plan to have the Canine HealthCheck kit sent home with every owner of a newly adopted dog. Owners will receive a discount to help promote knowing the genetics of their dog. Shaffer says it’s ideal for owners of adopted dogs, suspected purebreds or mixed breeds, to get a clearer picture of their overall genetic health. Paw Print Genetics also received volunteer assistance from students at Riverpoint Academy and throughout the Mead School District.
As for last month’s court ruling, it was Paw Print Genetics that took the proactive stance and filed the complaint. Initially filed in Spokane, a local judge eventually moved the case’s jurisdiction to Minnesota. Not long after launching the company in 2013, Shaffer says her company received “threatening letters” from companies across the country, like Canine EIC Genetics, alleging patent violation. In its legal position, the Spokane company’s attorneys cited the two prior U.S. Supreme Court rulings, arguing that DNA testing can’t be patented.
In a June 2013 ruling, the nation’s high court declared: “We hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated.” A similar conclusion the U.S. Supreme Court made the year prior forced the U.S. Patent and Trademark Office to alter guidelines and procedures regarding what kinds of methods and inventions are eligible for patent protection, Shaffer says.
Under new federal patent rules, according to Shaffer, claims covering “routine and conventional” methods of detecting disease—or risk factors for disease—aren’t eligible for patent protection. She reiterated her pleasure with the judge’s decision
“This allows the public to choose laboratories that they know will provide accurate, high quality testing,” she says.
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