Dolly and Alice

2 Journal of Law and the Biosciences (2015)

UC Irvine School of Law Research Paper No. 2016-39

22 Pages Posted: 16 Sep 2015 Last revised: 21 Jun 2016

See all articles by Dan L. Burk

Dan L. Burk

University of California, Irvine School of Law

Date Written: September 14, 2015

Abstract

The opinion of the United States Court of Appeals for the Federal Circuit, In re Roslin Institute, rejecting patent claims to mammals cloned from somatic cells, was rendered about a month before the United States Supreme Court’s decision in Alice Corp. v. CLS Bank International. The Alice opinion explicitly sets out the standard for determining whether an invention falls within statutory patentable subject matter. Thus one is thus left to wonder what the Roslin opinion might have looked like had it been decided only a few weeks later, after the Alice decision was published, with the benefit of the Supreme Court’s further direction on patentable subject matter. In this essay I explore whether in hindsight the Alice standard might have dictated a different outcome in Roslin, suggesting how the two-part test articulated by the Supreme Court in Alice might apply to a “products of nature” analysis for cloned mammals. Drawing on that analysis, I then use the Roslin case as a vehicle to highlight certain issues with the Supreme Court’s current subject matter jurisprudence as applied to biotechnology. By juxtaposing Dolly with Alice, it becomes clear that the Supreme Court has revivified a number of dormant biotechnology patent problems in the guise of subject matter analysis.

Keywords: clone, cloning, patent, intellectual property, subject matter, In re Roslin, Myriad Genetics, Dolly the sheep

JEL Classification: I18, O31, O32, O33, O34, L65

Suggested Citation

Burk, Dan L., Dolly and Alice (September 14, 2015). 2 Journal of Law and the Biosciences (2015); UC Irvine School of Law Research Paper No. 2016-39. Available at SSRN: https://ssrn.com/abstract=2660588

Dan L. Burk (Contact Author)

University of California, Irvine School of Law ( email )

4500 Berkeley Place
Irvine, CA 92697-1000
United States
949-824-9325 (Phone)

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