The U.S. Supreme Court Raises the Threshold for Patentable Subject Matter

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Many (if not all) inventions arise from the application of a known or newly discovered natural phenomenon, law of nature or abstract idea. It has been long established, however, that mere natural phenomena, laws of nature or abstract ideas are not themselves eligible for patent protection. Two recent cases before the U.S. Supreme Court draw attention to the question of the patentability of claims to methods of medical treatment and claims to isolated DNA sequences that incorporate natural phenomena.

In the first case, Mayo Collaborative Services v. Prometheus Laboratories, Inc., a unanimous U.S. Supreme Court ruled that steps directed generally to (1) administering a specific drug to a patient and (2) determining the level of metabolites of that drug in the patient in the claims of two patents that otherwise recited only a natural phenomena were not significant enough to transform the unpatentable laws of nature into patent-eligible applications of those laws. Justice Breyer, writing for the Mayo Court, stated that “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,”2 and that such “[p]urely ‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law,” thus adding considerations of novelty, and perhaps even obviousness,5 to the question of whether the claims constitute patentable subject matter under §101 of the Patent Act.

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