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Genetic Genealogy Patents – A Brief Review

Yesterday, DNA Heritage issued a press release (reproduced below) regarding an opinion issued by the UK Intellectual Property. The opinion (available here) was the result of inquiry into whether claims 4-7 of a 2004 patent in England are valid. The patent, held by Bryan Sykes of Oxford Ancestors, was issued in 2004 and is directed at creating and using a database of Y-DNA haplotype information to examine surname relationships and determine the likelihood of common ancestry between individuals. The UK IPO’s opinion holds that the claims are invalid because they are either not novel, or did not require an inventive step (i.e., they were obvious). Most intellectual property offices, such as those in the UK and the US, require that an invention at least be novel and nonobvious.

Interestingly, Sykes obtained a similar patent from the U.S. Patent Office on July 24, 2007 (US 7,248,970). During prosecution (i.e. the process of obtaining the patent), the patent examiner stated that the patent was not novel in view of certain references such as scientific articles by Paoli et al. and Jobling et al., but the applicant was able to argue around that point. The issue of obviousness was never raised by the examiner.

While the UK opinion doesn’t affect the validity of the U.S. patent, the same references that were used to argue that the UK patent is not novel or lacked an inventive step could potentially be used to argue invalidity of the US patent if someone were to challenge it.

As many of you know, I’m currently studying to be a patent attorney, so this is right up my alley. I wondered how many other patents related to genetic genealogy exist, so I did a quick patent search and came up with the following list. Only the first item is an issued patents; the others are published applications, meaning that they are or were pending before the patent office but have not yet been issued as final patents. Note that all is information is public information available through the PAIR system at the United States Patent Office.

  • 7,248,970 – Forensic and Genealogical Test – Discussed above. The inventor is Bryan Sykes.
  • 2003/0172065 – System and Method for Molecular Genealogical Research – A method for identifying commonalities in haplotypes and other genetic characteristics of two or more individual members of a biological sample. The inventors are James L. Sorenon, Scott R. Woodward, Joel Myres, and Natalie Myres.
  • 2004/0029133 – Mitochondrial DNA Polymorphisms – A method of using SNPs to detect diseases, determine haplogroups, or establish genetic relationships. The inventor is Corinna Hernstadt. This application is currently marked as abandoned.
  • 2004/0229231 – Compositions and Method for Inferring Ancestry – A method using Ancestry informative markers to draw inferences about traits. The inventors are Tony N Frudakis and Mark D. Shriver. See also 2007/0037182, a related application from the same applicants.
  • 2006/0025929 – Method of Determining a Genetic Relationship to at Least One Individual in a Group of Famous Individuals Using a Combination of Genetic Markers – the title describes the method. The inventor is Chris Eglington. This application is currently marked as abandoned.
  • 2007/0042369 – Methods of Selection, Reporting and Analysis of Genetic Markers Using Broad-Based Genetic Profiling Applications – A method for determining whether an individual has an enhanced, diminished, or average probability of exhibiting a phenotype, or for determining the genomic ethnicity of an individual. The inventors are Martin G. Reese and Charles White.
  • 2007/0178500 – Methods of Determining Relative Genetic Likelihoods of an Individual Matching a Population – the title describes the method. The inventors are Lucas Martin and Eduardas Valaitis.

Now, before you get up in arms, let me make a point. Intellectual property is perhaps the most valuable asset most companies possess. Additionally, our patent system has been the model for hundreds of systems around the world and arguably is responsible for much of the success of our country in the last 200 years. If the patents in the list above contain inventions that are useful, novel, and nonobvious, then they are valid and should be respected.  If not, then they should be challenged and invalidated.

The text of the DNA Heritage press release is as follows:

DNA Heritage success in patent battle helps keep genealogy DNA test prices low.

DNA Heritage has recently overcome patent claims held by a competitor which would have severely restricted the use of DNA testing and databases that allow families around the world to match and connect up through their DNA. The patent covers the use of surnames and Y-chromosomes to establish a family connection. The UK Intellectual Property Office (UK IPO) has now rendered a formal opinion stating that the relevant claims are all invalid.

Alastair Greenshields, principal of DNA Heritage said “Patents are often needed to provide an incentive for innovative work, but in this case the academic work lacked inventiveness as other researchers had already shown the connection between surnames, Y-chromosomes and family history. This is a great outcome and allows DNA Heritage and other test companies to continue offering these tests and database services to the ever-growing genetic genealogy community without having to raise prices due to royalty payments.”

An infringement challenge from patent assignees Oxford Ancestors, which had been running for over two years, was thwarted when DNA Heritage asked the UK IPO to re-evaluate the patent claims in the light of work by previous researchers. After considering submissions from both parties, an Opinion provided on the 8th April 2008 (with a 3 month review period) found that of the four claims contested, all four were invalid for lack of an inventive step, and one was additionally lacking novelty.

Results from DNA Heritage’s testing using at-home cheek swabs and their accredited laboratory can both be fed into an in-house and public-access Ybase database. These have become invaluable tools for those researching their direct male lineage and surname.

About the company:

Established in 2002, DNA Heritage provides advanced genetic tests to the genealogy community and those tracing their roots. An innovator in providing multi-lab compatible tests and the open-access Ybase database, DNA Heritage enables many genealogists around the world to enhance their families’ research.  For more information, visit http://www.dnaheritage.com.

Blaine Bettinger

Intellectual property attorney, genealogist, and author of The Genetic Genealogist since 2007

3 Comments

  1. I agree about intellectual property often being the most valuable asset, but that is not the case for lesser developed countries. The more developed countries are the ones that have have the most value in their intellectual property.

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