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Supreme Court Reverses the Federal Circuit Court of Appeals in

Mayo v. Prometheus

In a Decision Certain to Have a Significant Impact on Patenting Inventions Related to Personalized Medicine

 

On March 20, 2012 the Supreme Court ruled that an application of a law of nature must do more than simply state the law of nature while adding the words "apply it."  It must limit its reach to a particular, inventive application of the law [of nature].

The Court held that Prometheus' process patent claims were not patentable subject matter under 35 U.S.C. ยง101, because the three additional steps in the process claims, which are not themselves natural laws were not sufficient to transform the nature of the claims to "genuine applications of those laws rather than drafting efforts designed to monopolize the correlations."

 

The Court emphasized the concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like.  The Court stated "[i]n telling a doctor to measure metabolite levels and to consider the resulting measurements in light of the correlations they describe, they tie up his subsequent treatment decision regardless of whether he changes his dosage in the light of the inference he draws using the correlations."

 

This decision is certain to have a significant impact on patenting inventions related to personalized medicine.

The complete opinion can be found at: http://www.supremecourt.gov/opinions/11pdf/10-1150.pdf

 

This update was prepared by Richard Arrett. Richard is an intellectual property lawyer at Vidas, Arrett & Steinkraus. For more information about this update, please contact Richard at 952-563-3018 or via email.

Disclaimerr
This update should not be considered legal advice. Your receipt of this update does not establish an Attorney-Client Relationship. We do, however, invite you to contact us if you would like us to represent you.

 

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