23andMe Patent for Gamete Donor Selection

Picture of the 23andMe product, from their webpage

Picture of the 23andMe product, from their webpage

23andMe, Inc.’s Patented “Designer Baby System.”

Yesterday Fox News ran the headline “Genomics firm 23andMe patents ‘designer baby’ system, promises not to use it.”  Many other media outlets have adopted the phrase “designer babies,” offering all sort of moral and ethical commentary on whether humankind should be playing God and tinkering with Genomics.  I will avoid all of these issues in this article because I don’t find them interesting.  This article will focus on 23andMe’s patent.  What did 23andMe patent?  What didn’t they patent?

23andMe’s U.S. Patent No. 8,543,339

On September 24, 2013, 23andmMe, Inc. was awarded a patent on their “Gamete Donor Selection on Genetic Calculations” application.  Their application (U.S. Patent App. No. 12/592,950 claiming priority to U.S. Provisional Patent App. No. 61/201,101, filed Dec. 5, 2008) issued as U.S. Patent No. 8,543,339 (“the ‘339 Patent”).  With the award of the patent, various news organizations have become interesting in 23andMe and it’s patents.  Below, I offer my thoughts as a chemical patent expert without any interest in the ethical and moral implications of this technology.

23andMe’s Patented Property

The claims in a patent define the property granted in the patent.  All of the articles about 23andMe’s patent discuss what the patent describes or “lays out” in the specification.  However, only the claims define the metes and bounds of 23andMe’s property.  The claims are found at the end of the patent document, just after the heading “What is claimed is:”

U.S. Patent No. 8,543,339 has 28 Claims

The ‘339 Patent has 28 claims.  These claims define three different inventions at various levels of generality.

  • Claim 1 defines “a system for gamete donor selection….”  Claims 2-10 and 22 define variations of that general invention by dependent claims.
  • Claim 11 defines “a method for gamete donor selection….”  Claims 12-20, and 23 define variations on that general invention by using dependent claims.
  • Claim 21 defines “a non-transitory computer program product for gamete donor selection….” Claims 24-28 define variations on that general invention by using dependent claims.

In short, the claims in 23andMe’s patent define systems, methods, and computer programs for gamete donor selection.  This should be kept firmly in mind before the company is accused of “owning” babies, genetic material, or the like.  It’s also interesting to note that the product they sell isn’t really a gamete donor selection product.

All Claims in 23andMe’s ‘339 Patent are Limited to Identifying a Preferred Donor from a Plurality of Donors

This is where it gets interesting.  All of the claims in 23andMe’s ‘339 patent are limited to systems, methods, and programs that include identifying a preferred donor among a plurality of donors based on 23andMe’s statistical analysis.  In short, without “identifying a preferred donor,” a system, method, or program would  apparently not infringe on the claims in the patent.
On October 1st, 2013, 23andMe published an article stating the company’s position on the patented technology.  In short, the company is completely dedicated to “enjoyable”genetic exploration,” and offering people with an “engaging way” to “better understand” genetics by introducing people to their own DNA.  The company disavows any intentions to actually pursue the invention described and claimed in the ‘339 patent.

23andMe Patent Covers the Controversial Subject Matter—But the company doesn’t practice that invention.

Notably, the service provided by 23andMe does not include “identifying a preferred donor.”  Accordingly the product that 23andMe sells on its website is not covered by the ‘339 patent.  I find this fascinating:  the company sells a really cool product that is not patented and explicitly avoids monetizing the intellectual property that it has patented.  This raises two questions for me: (1) Is 23andMe pursing patent coverage on the product that it is presently marketing and selling? and (2) what does it intend to do with the potentially valuable intellectual property that it has recently received?
First, the home testing product could be very valuable.  It does offer a fun and engaging way to learn about your own DNA.  Why not pursue claims and draft an application covering that product?  It has already demonstrated tremendous value in the marketplace.  Plus, all of this recent press should lead to a massive increase in demand.
Second, what is going to happen with the patented technology?  Despite issuing a press release stating that the company would never enter the designer baby market itself, the company did not say anything about licensing or selling the technology to another entity.  I suspect that the market for designing a healthy baby with desired physical attributes could be quite lucrative.  23andMe says that they “want to be very clear about our technology and intentions.”  In particular, aside from spending 6 years drafting and prosecuting a US Patent application, they have “never pursued” the designer baby market, “nor do [they] have any plans to do so….”
Do those statements include selling or licensing the technology to other companies?

One Response to “23andMe Patent for Gamete Donor Selection”

  1. Richard Bittle says:

    As a layman who just paid for and received his “spittoon” what am I advised by legal counsel of “23 and me”, to protect my rights against unlawful encroachment? Or have I already forfeited those rights by paying for the kit? and should I spit in the tube and send it in without further concern?
    I have tested FTdna, Ancestry.com, and now ready to test with “23”, if……???

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