Vedder Thinking | News Thomas J. Kowalski and Deborah L. Lu, Ph.D., Discuss Denied "Dolly" Clone Rehearing in Bloomberg BNA's Life Sciences Law & Industry Report
Thomas J. Kowalski and Deborah L. Lu, Ph.D., both Shareholders in Vedder Price's New York office and members of the firm's Intellectual Property group, were quoted in Bloomberg BNA's Life Sciences Law & Industry Report article, "Fed. Cir. Denies 'Dolly' Clone Rehearing; Supreme Court Only Option Available."
On August 12, 2014 the U.S. Court of Appeals for the Federal Circuit denied the Roslin Institute's petition for a panel rehearing of whether Dolly, the cloned sheep, could be claimed as patent-eligible subject matter, leaving a petition for the Supreme Court as Roslin's only viable option.
In 1996, Keith Henry Stockman Campbell and Ian Wilmut of the Roslin Institute successfully produced the first cloned mammal from an adult somatic cell and were able to obtain a patent on the somatic method of cloning mammals. Over ten years later, a U.S. Patent and Trademark Office examiner issued a rejection of Campbell and Wilmut's claim, which the Patent and Trademark Office's Patent Trial and Appeal Board approved this past May, causing the Roslin Institute to appeal. The Court upheld the decisions in Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), and Diamond v. Chakrabarty, 447 U.S. 303 (1980), stating that "naturally occurring organisms are not patentable" and "an organism is patent eligible if it is 'new' with 'markedly different characteristics from any found in nature.'"
The Court did, however, leave some leeway for other applicants in "Dolly-like" situations by acknowledging that "having the same nuclear DNA as the donor mammal may not necessarily result in patent ineligibility in every case." Mr. Kowalski and Dr. Lu commented on this fact by stating "[The Court] has even left open the question of whether a clone of an extinct animal, such as a Dodo Bird, may be patent-eligible since having the same nuclear DNA as a donor animal may not necessarily result in patent ineligibility in every case (and the extinct animal arguably does not exist in nature at this time)."