The word of the day at the Supreme Court on Monday was "snip." The biotech company Myriad Genetics is defending patents that give it exclusive control over two genes linked to breast cancer. Critics have argued that Myriad merely "snipped" the genes from the human genome, and that this no more deserves patent protection than "snipping" a leaf from a plant or removing a liver from a human body.

"Here, what's involved is snipping," Chief Justice John Roberts said to Myriad's lawyer, Gregory Castanias. "You've got the thing there and you snip off the top and you snip off the bottom and there you've got it."

"You wouldn't even know where to snip until the Myriad invention," Castanias countered.

Justice Elena Kagan compared Myriad's patent to finding a rare plant in the Amazon with medical properties. "It takes a lot of ingenuity and a lot of effort to actually find that plant, just as it takes a lot of effort and a lot of ingenuity to figure out where to snip on the genetic material. But are you saying that you could patent that plant because it takes a lot of effort and a lot of ingenuity to find it?"

Castanias was peppered with numerous variations of this question. The law says that "products of nature" are not eligible for patent protection. Myriad contends that the process of "isolating" the genes from the human body is sufficient to transform these strands of genetic code into a patent-eligible invention. That's why the characterization of Myriad's work is crucial. Merely "snipping" a gene out of a patient's genome doesn't sound like the kind of thing that merits a patent monopoly.

The stakes in the case are high. Myriad's patents have given the firm a de facto monopoly over genetic testing for genes known as BRCA1 and BRCA2. Critics contend that Myriad's stranglehold has harmed patients by raising the cost and reducing the quality of genetic tests for breast cancer. And if the Supreme Court invalidates Myriad's patents, thousands of other gene patents could fall too.

The Amazonian plant example was also posed to the American Civil Liberties Union's Chris Hansen, who represented a coalition of medical researchers and clinicians seeking to invalidate Myriad's patent. "If we simply pick the leaf off of the tree and swallow it and it has some additional value, then I think it is not patentable," Hansen said.

However, Hansen conceded, a concentrated form of the active ingredient in the leaf may well be eligible for patent protection. "If it doesn't work in the diluted form but does work in a concentrated form, you've given it a new function," he said. But Hansen argued that Myriad's "invention" wasn't like that. Merely removing it from the body so it can be examined doesn't amount to finding a new use for it.

Incentives to innovate

Myriad executives have argued that their patent is justified by their large investment in cancer research. The company's CEO wrote in a USA Today editorial yesterday that his company "spent more than $500 million over 17 years before" to recoup its investment.

Concern about patents and incentives were picked up by several justices during oral argument today. Justice Kagan asked: "Why shouldn't we worry that Myriad or companies like it will just say, well, you know, we're not going to do this work anymore?"

Hansen argued that wasn't a cause for concern. "There were other labs looking for the BRCA genes and they had announced that they would not patent them if they were the first to find it," he said. "We also know that prior to the patent actually being issued, there were other labs doing BRCA testing and Myriad shut all that testing down."

He also argued that allowing patents on genes hampers downstream innovation. "Recombinant DNA is in fact what all the major innovations in the industry are doing these days," he said. He warned that locking up pieces of the human genome was preventing scientists from developing new medical innovations based on existing genetic material.

The solicitor general participated in the argument on behalf of the Obama administration. The administration suggested a way the court might split the difference between the two sides in the case. It argued that patents on isolated DNA strands should not be permitted. However, the solicitor general argued that cDNA, strands of genetic material with inactive sections removed, should be eligible for patent protection. Creating cDNA requires removing genetic sequences from the middle of the gene, not just at the end. In the government's view, that's enough innovation to merit patent protection.

But in an unusual move, the United States Patent and Trademark Office (USPTO) declined to endorse the solicitor general's position. The USPTO has been granting gene patents for three decades and evidently does not agree with the Obama administration's position that patents on isolated DNA molecules should be invalidated.

It's always dangerous to try to predict the outcome of a Supreme Court case based on oral arguments, but some justices signaled clear skepticism of Myriad's position. Justice Kagan opined that the patent office "seems very patent happy." Justice Stephen Breyer, a reliable patent skeptic, suggested that Myriad's argument was "bothering" him.

"I find it very, very difficult to conceive how you can patent a sequential numbering system by nature," said Justice Sonia Sotomayor, "in the same way that I have a problem in thinking that someone could get a patent on the computer binary code merely because they throw a certain number of things on a piece of paper in a certain order."

It will take the votes of these three justices, plus two more, to invalidate Myriad's patents. A decision in the case is expected by the end of June.