Could an animal be patented? Loophole in recent decision leaves the door open

June 26, 2014


William D. Schultz, Partner
Bette Muirhead, Law Clerk

“For patents cannot issue for the discovery of the phenomena of nature…like the heat of the sun, electricity, or the qualities of metals, [which] are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none.”

So said the Supreme Court in Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). One could argue the Supreme Court pulled back a little from the Funk Brothers Ruling in Diamond v. Chakrabarty, 447 U.S. 303 (1980). There the Court held that novelty could be found in a bacterium modified to have “markedly different characteristics from any found in nature.” Id. at 310. A little over a year ago the Court reaffirmed both of these rulings in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), when it invalidated Myriad Genetics’ patents on the sequences for BRCA1 and BRCA2, naturally occurring genes, while upholding its patents on cDNA, man-made DNA sequences from which the exons have been removed.

If Myriad Genetics is simply a retelling of the same story we’ve been hearing for the past 30+ years, why is it interesting? A recent ruling from the Federal Circuit illustrates one of the many reasons.

Everybody who was alive in the 1990s should remember Dolly the Sheep, the first cloned mammal. Created from an adult somatic cell, she was a media sensation and the process that created her was a scientific breakthrough of grand proportions. Given the novelty, it should surprise no one to hear the scientists responsible for Dolly sought to patent their work. The process which created Dolly was patented, and that patent has not been seriously disputed. But recently the Federal Circuit heard an appeal on the PTO’s decision not to grant a patent on Dolly herself, in In re Roslin Institute, 2014 U.S. App. LEXIS 8647 (Fed. Cir. 2014).

The Federal Circuit affirmed the rejection under Myriad Genetics, Chakrabarty, and Funk Brothers, but there is an opening left in the court’s ruling. Roslin, the inventors’ assignee, made an argument the court didn’t reject out of hand. The argument claimed the clones were distinguishable because they got mitochondrial DNA from the donor oocyte, rather than the nucleus of the donor somatic cell. The court rejected this argument, but not because the distinction didn’t create patentability. Rather, it rejected the argument because the distinction wasn’t claimed within the patent application. The court further questioned whether the different mitochondrial DNA would influence the characteristics of the cloned animals. But in the end the main problem with this argument was simply that it wasn’t properly claimed.

Ultimately, this case leaves us in an interesting place. The court seems to suggest we could see a patent application approved for an animal, one that is for all intents and purposes simply a copy of a second unpatentable, naturally-occurring animal. All that would be necessary is for the claims to be written in such a way to justify it. And if that comes to pass -- where does that leave the “natural phenomena” exception to patentability?

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