Originally published March 21, 2012
On March 20, 2012, the United States Supreme Court unanimously
reversed the Federal Circuit in a long-awaited decision that may
have broad-reaching effects on diagnostic method patents, as well
as personalized medicine patents. At issue in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. ___ (2012) was whether the correlation between blood levels
and optimal dosages of a drug was a patentable process or an
unpatentable law of nature. The Court held that Prometheus'
claim, which had been twice upheld by the Federal Circuit, was an
unpatentable law of nature.
The method claim at issue recited three elements: (1)
administering a drug, (2) determining the level of the drug
metabolite, and (3) a "wherein" clause that generally
notes a metabolite level for dose adjustment. Justice Breyer wrote
that despite these steps, "the patent claims [did not] add
enough to their statements of the [natural] correlations
to allow the processes they describe to qualify as patent-eligible
processes that apply natural laws[.]" Since all of
the steps "must be taken in order to apply the laws in
question," the Court found that the claims did not confine
their reach to particular applications of those laws, and indicated
that a patent on such a method would "tie up" too much of
the future use of these laws of nature. Notably, the Court did not
decide whether including steps that were "less
conventional" would make similar claims patentable, but the
discussion of the Diehr and Flook precedents
emphasized the importance of specificity.
Applied broadly, the Court's decision may affect many pending
and issued diagnostic method and personalized medicine patent
claims and patenting strategies. As an initial step, patent
applicants, owners, and licensees should review and evaluate their
patents and applications to see how the Court's decision might
affect their claims. As the specificity of each claim will
undoubtedly vary, all claims may not be affected in the same way,
so evaluation should be done on a claim by claim basis
with the assistance of counsel. The owners of issued patents with
questionable claims may want to consider narrowing reissues.
Going forward, diagnostic method claims will need to be written
with closer attention paid to the specificity and the
transformative nature of the steps in light of this decision. In
terms of an offensive strategy, companies may also want to review
and evaluate competitor diagnostic patent claims and revisit prior
freedom to operate analyses in view of this decision.
The Mayo decision is expected to have long-term
ramifications in the pharmaceutical and biotechnology industries.
The full text of the decision can be found here. Any potentially affected or interested
parties should continue to follow the developments in this
area.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.