Mayo v Prometheus

The Supreme Court’s March 20, 2012 decision in Mayo v. Prometheus, 566 U.S. (2012), invalidates patent claims when they invoke a law of nature but do not “confine their reach to particular applications of those laws.” This case involves claims for optimizing therapeutic efficiency of a treatment, but the principles enunciated may have impact outside of medical arts.

Mayo v. Prometheus marks a challenge to draft patent claims for any industry interested in application of a law of nature, or even an algorithm. The impact of this case may extend from medical arts to electrical technologies, business methods, and other technologies.

Going forward, claims applying a law of nature should separately recite method steps that are novel and non-obvious in the absence the law of nature. This should be done to frame application of the law of nature as restricted to the particular “inventive concept” embodied in the separately recited method steps.

 

 Join AUTM for a FREE webinar to learn more

Mayo v. Prometheus – How it Will Impact Technology Transfer & What You Need to Know

Noon – 1:30 p.m. EDT, April 25, 2012
Location: Online
Moderated by: Howard Bremer, Wisconsin Alumni Research Foundation
Panelists: Douglas Bucklin, Volpe & Koenig, PC
                Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff, LLP

While this webinar is free, you must register in advance. Learn more & register here.

 

Suggested Reading

 

Read the Supreme Court opinion 

Supreme Court Remand of Myriad Case Leaves Gene Patent Eligibility in Question
Reproduced with permission from Life Sciences Law & Industry Report, 6 LSLR 402 (Apr. 6, 2012).
Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
read the article here.

The Supreme Court’s Bad Precedent for Innovation, Xconomy

Mayo Collaborative Services v. Prometheus Laboratories Inc., SCOTUSblog.com

Examining Subject Matter Eligibility under Mayo v. Prometheus, Patentlyo.com

Mayo v. Prometheus – A European View, Patents4Life

Read this memorandum from the USPTO that provides preliminary guidance to patent to the Patent Examining Corps. Additional guidance will be issued soon.