Supreme Court Rules to Limit the Types of Methods Eligible for Patenting


[authors: Stuart Meyer, David Austin, Daniel Brownstone, Pauline Farmer-Koppenol, Robert Sachs, Michael Shuster]

The U.S. Supreme Court today handed down a unanimous decision in Mayo v. Prometheus holding that method claims for applying a law of nature using merely conventional steps are not eligible for patent protection. Reversing the Federal Circuit on a fundamental issue of patent law, the Court stated that the “Machine or Transformation” test for patentability, which it endorsed as a useful, though not exclusive, test for the patentability of method claims less than two years ago in the Bilski case, does not trump the prerequisite requirement that “laws of nature, natural phenomena and abstract ideas” cannot be patented. While the Court’s reasoning in this decision has a dramatic impact on the patentability of various innovations in the life sciences, its scope extends far beyond that field. The ramifications of the decision will be significant for fields such as software engineering, information science, chemistry and electrical engineering.

Learn more about the Court’s ruling in Mayo v. Prometheus.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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