Author: Dan Burk (University of California, Irvine)
The role of patents in the emerging practice personalized medicine is problematic, as the potential market for tailored treatments may be too small for the patent incentive to be effective. However, in certain instances patent exclusivity may serve less as an incentive to invest in new inventions than it might to serve as an aggregator for certain types of ancillary information that will be critical to personalized diagnosis and treatments. In this essay I look at the effect of patents on the collection and application of such non-patentable data related to genetic variation. My vehicle for examining such effects is the testing service for genetic predisposition to cancer which was the subject of the recent Supreme Court decision in Association for Molecular Pathology v. Myriad. The Myriad patents appear to have given rise to detailed databases of genetic variations that are now held as trade secrets. This shift toward trade secrecy suggests that patents may play a role in personalized medicine, and perhaps more generally, as aggregators of widely dispersed but valuable information. The welfare effects from such data aggregation, both positive and negative, have gone largely unexplored, and suggest a previously unappreciated justification for patenting in some instances.