December 1, 2021

Volume XI, Number 335

Advertisement
Advertisement

December 01, 2021

Subscribe to Latest Legal News and Analysis

November 30, 2021

Subscribe to Latest Legal News and Analysis

November 29, 2021

Subscribe to Latest Legal News and Analysis
Advertisement

Dolly Led to Slaughter – Part II - Adult Cell Cloning

As I read and re-read In re Roslin, App. No.  2013-1407 (Fed. Cir., May 8, 2014), before going across the street to “testify” at the PTO 101 Forum, I was struck by how the logical pathway chosen by the panel to deny claims to the famous cloned sheep could have gone the other way.

The panel followed the pathway: a) no naturally-occurring organism is patentable, b) Dolly’s DNA donor “parent” was not patentable, c) Dolly was identical to the donor parent in genetic make-up and d) Dolly is patent-ineligible under s. 101, since she exhibited no marked difference from the donor sheep.

This analysis let the panel sidestep  the fact that Dolly is “man-made”. An alternative analytic pathway is a) no naturally occurring organism is patentable, b) Dolly is a product of the hand of man and her difference from naturally occurring organisms is her “sameness”, e.g. her very existence is not a natural phenomenon, and c) Dolly meets the requirements of s. 101 and Chakrabarty as a patent-eligible product of human creativity. (I know Dolly is no more – I am just using the present tense for clarity.)

Of course, my alternative analysis was not adopted by the panel, but at least they did not refer to Dolly as a “product of nature” but rather ruled that she was unpatentable subject matter under s. 101. Maybe the Supreme Court will see it my way. It really should grant cert. if only to endorse the “markedly different” dictum in Chakrabarty that is currently the law of the land at both the Fed. Cir. and the PTO.

Another issue that needs resolution is whether or not the effort required to obtain a pure culture of cells (as in Bergy) or a purified natural product as in Parke-Davis is “creative” enough to avoid the curse of Funk Bros. But that’s now a story for another day.

To see part 1 of Analysis:  

© 2021 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume IV, Number 129
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Warren Woessner, Registered Patent Attorney, Schwegman Lundberg Law firm
Shareholder

Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.

Warren received his B.A. in chemistry (1966) from Cornell University, his Ph.D. (organic chemistry, 1971) and his law degree (J.D., cum laude, 1981) from the University of Wisconsin...

612-373-6900
Advertisement
Advertisement
Advertisement