The United States Supreme Court recently confirmed the importance of the patent eligible subject matter inquiry under 35 U.S.C. § 101 when assessing whether a claimed invention (“claim”) is patentable in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The Court also stressed that patents will not be issued to a claim that simply recites a law of nature unless there are additional steps that ensure the claim is sufficiently tailored to not preempt further use of the natural law. The Court’s decision shocked the patent law community. However, decisions by lower courts since have demonstrated that Prometheus has not dramatically altered the landscape of patent eligibility analysis, though it has deeply impacted cases involving diagnostic medical therapeutic techniques. While the Court of Appeals for the Federal Circuit remains split as to how narrowly it will read Prometheus, its forthcoming en banc opinion in CLS Bank Int'l v. Alice Corp. Pty. Ltd. will likely unify its interpretation of the case. In the meantime, following the lower court cases is the best approach to understanding how the patent law landscape has changed since the landmark case.
Prometheus v. Mayo: Limited Implications for § 101 Jurisprudence,
8 Wash. J. L. Tech. & Arts
Available at: https://digitalcommons.law.uw.edu/wjlta/vol8/iss5/3