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. §101, 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:
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
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