Advances and success in cloning and genetic engineering may mean passenger pigeons, dodos, gastric-brooding frogs, thylacines, woolly mammoths, and other extinct species will once again grace this planet. As de-extinction becomes a reality, it is uncertain whether these animals are patent eligible. Diamond v. Chakrabarty opened the door to cloning multicellular organisms. Since then, the U.S. Patent Office’s Board of Patent Appeals and Interferences has found “non-naturally occurring, man-made organisms including animals” to be patentable subject matter under 35 U.S.C. § 101. Because the initial case challenging this decision failed on procedural grounds, the underlying legal issue has not been addressed in a federal court. Congress forbids patents directed at, or encompassing, human organisms, but has been silent with respect to animals. The Supreme Court holds that sections of naturally occurring DNA are not patent eligible, while non-naturally occurring synthetic strands are. But the Court has not considered organisms created from both naturally occurring and synthetic DNA, as would be the case in de-extinction. The Federal Circuit upheld a decision denying a patent for Dolly the cloned sheep, yet left room for successful patents of other cloned animals. The Federal Circuit’s distinction may lie between patenting the clone of an animal that already exists and patenting an animal that does not or no longer exists. In light of ever-changing science and technology, there are few clear boundaries of what organisms can or cannot be patented. Practitioners need to be aware of the boundaries and the gray areas in the existing law to navigate a path towards patentability of de-extinct species.
Miriam R. Swedlow,
The Wooly-Mammoth in the Room: The Patentability of Animals Brought Back from Extinction Through Cloning and Genetic Engineering,
11 Wash. J. L. Tech. & Arts
Available at: https://digitalcommons.law.uw.edu/wjlta/vol11/iss3/3