title: Dolly andAlice.
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 inAlice Corp. v. CLSBank International. TheAliceopinion explicitly sets out the standard for determining whether an invention falls within statutory patentable subject matter. Thus one is thus left to wonder what theRoslinopinion might have looked like had it been decided only a few weeks later, after theAlicedecision was published, with the benefit of the Supreme Court's further direction on patentable subject matter. In this essay I explore whether in hindsight theAlicestandard might have dictated a different outcome in Roslin, suggesting how the two-part test articulated by the Supreme Court inAlicemight apply to a 'products of nature' analysis for cloned mammals. Drawing on that analysis, I then use theRoslincase as a vehicle to highlight certain issues with the Supreme Court's current subject matter jurisprudence as applied to biotechnology. By juxtaposing Dolly withAlice, it becomes clear that the Supreme Court has revivified a number of dormant biotechnology patent problems in the guise of subject matter analysis.
authors: University of California, Irvine, School of Law, 401 East Peltason Drive, Irvine, CA 92617, USA.
authors: Dan L
authors: DL
authors: Burk
keywords: biotechnology; cloning; intellectual property; patent eligibility; patents; subject matter