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
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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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You are
receiving this e-mail because Paul, Weiss, Rifkind, Wharton &
Garrison LLP wishes to keep you informed of important and current legal
issues. If you would like to unsubscribe, please e-mail us at news@paulweiss.com, and we will remove you from our update correspondence list.
You may also write to us at:
Attn: Practice Development Department
Paul, Weiss, Rifkind, Wharton & Garrison LLP
1285 Avenue of the Americas
New York, NY 10019-6064
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Copyright 2012,
Paul, Weiss, Rifkind, Wharton & Garrison LLP. In some jurisdictions,
this communication may be considered attorney advertising. Past
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