Tuesday, March 27, 2012

Prometheus Diagnostic Method Claims Not Patentable Says U.S. Supreme Court

Text below crossposted from LawPundit.

BRAVO to the United States Supreme Court! The unanimous (who would have believed that!) U.S. Supreme Court decision in Mayo v. Prometheus (and also the unanimous decision in Sackett vs. EPA) have restored our faith that the nation's highest court can be counted upon to see past the hype, spot the major legal issues facing the world, and decide them correctly. In the past, we have spent so much time at LawPundit battling against insanity in the patent sector (see here, here and here), that I am happy here just to pass along to you the following email which I received today. As a Paul, Weiss alum, I ask the people at Paul, Weiss to overlook my posting their letter in entirety, since the letter is covered by all kinds of copyright protection, but this is a very important case, and so it is probably better to let one of the world's top law firms give you the scoop, rather than my commentating it again from my admittedly biased point of view. The text of the Paul|Weiss email is given below, while the full text of the Client Memorandum summarizing the Prometheus decision (only 4+ pages in the memo, beautifully written) is accessible by clicking the link in that email:

Client Memorandum
March 21, 2012
Paul, Weiss, Rifkind, Wharton & Garrison LLP

Paul | Weiss
Client Memorandum

The Supreme Court Holds That Prometheus’s Diagnostic Method Claims Are Unpatentable Under 35 U.S.C. § 101

The United States Supreme Court issued a significant, unanimous decision yesterday in Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150 (2012), holding that certain diagnostic patent claims were invalid for failure to recite patent-eligible subject matter under 35 U.S.C. § 101. The Court determined that the “steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and noted that “upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.” In so holding, the Supreme Court reversed a Federal Circuit decision that the method claims were patent-eligible under the machine-or-transformation test, and do not impermissibly claim natural phenomena.

The Supreme Court’s opinion is of interest to pharmaceutical and biotechnology companies because the decision leaves a large number of therapeutic and diagnostic patent claims vulnerable to challenge, especially those that concern correlations resulting from natural body processes. The Supreme Court’s decision states, however, that new drugs and new methods of using existing drugs remain patentable subject matter. And the decision suggests that certain patents covering diagnostic tests directed at the measurement of new or previously unknown analytes would withstand challenge under § 101.

A link to the memo is attached. If for security reasons your e-mail system does not enable web links, please copy and paste the link into the address window of your Internet browser.

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