Prometheus Rebound

The Supreme Court issued its opinion today in the case of Mayo v. Prometheus, which asked the Court to determine whether a diagnostic process that employed a law of nature could be patented. After an oral argument which left many of the justices uncertain where to draw the line between patentable processes and unpatentable laws of nature, Justice Breyer, it appears, drew that line with sufficient clarity to satisfy all of his colleagues, resulting in a unanimous opinion that the process at issue in the case was not patent eligible.

The critical issue for the Court was defining what more is required to make process patent eligible than the recitation of a natural law, which cannot itself be patented. At one end of the spectrum, Justice Breyer envisions a patent that recites a natural law, then tells practitioners to go “apply the law.” “Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.” In considering the Prometheus patent, the Court concluded that it did nothing more than these examples—it recited a natural law relating to the treatment of certain diseases to an audience of doctors who treat patients with those diseases, and then told those doctors to apply that law “through whatever process the doctor or laboratory wishes to use.” That isn’t enough.

In closing, the Court addressed (among others) a pair of policy issues worth mentioning. First, Justice Breyer noted that the patent laws are intended to encourage future discovery and invention by both granting patents to eligible applications to spur innovation and by preventing applicants from “improperly tying up the future uses of laws of nature” in ways that would deter innovation. “[T]here is a danger that the grant of patents that tie up their use will inhibit future innovation premised upon them, a danger that becomes acute when a patented process amounts to no more than an instruction to ‘apply the natural law,’ or otherwise forecloses more future invention than the underlying discovery could reasonably justify.”

Second, the Court rejected the Government’s argument that other statutory provisions, such as the novelty requirement of 35 U.S.C. § 102, or the non–obviousness requirement of 35 U.S.C. § 103, can perform the screening function of 35 U.S.C. § 101, which governs patent eligibility. “We recognize that, in evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.” The Court, accordingly, “decline[d] the Government’s invitation to substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.”

The doctrine of patent eligibility lives on, and in a unanimous opinion of the Supreme Court no less.

Posted by David Swetnam-Burland