Clinical Method Claims Dodge a Bullet: Prometheus v. Mayo


On December 17, 2010, the U.S. Court of Appeals for the Federal Circuit confirmed that claims to clinical and diagnostic methods can constitute patent-eligible subject matter in its Prometheus II,1 decision. This was one of the first Federal Circuit opinions applying the recent United States Supreme Court Bilski case, which interpreted the statutory requirements for patent eligibility under 35 U.S.C. § 101.2

In Prometheus II, the Federal Circuit essentially reaffirmed its earlier decision in Prometheus I,3 holding that the claims recite a patent-eligible application of naturally occurring correlations and do not wholly preempt all uses of such correlations. Prometheus II clarifies that after Bilski, clinical and diagnostic methods can still be patented.

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