Supreme Court Decision Raises Questions of the Validity of Many Bioscience Patents: Did the Invention “Add Enough?”


On Tuesday, March 20, 2012, the U.S. Supreme Court issued its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 566 U.S. ____ (2012). In a unanimous decision, the Supreme Court sided with Mayo and held that method claims involving administering a drug to a patient and determining the effect were not patentable subject matter. The court concluded that the method was directed to a “law of nature” and therefore not patentable. The court reasoned that the Prometheus patent added nothing of significance to the natural correlation between drug dosages and drug metabolite levels and that the patent otherwise had the effect of stifling future innovation in this area. The implications of this case are significant for certain segments of the pharma and biotech industries, particularly those wishing to obtain or enforce patents with certain types of diagnostic claims.

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

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.

© Snell & Wilmer | Attorney Advertising

Written by:


Snell & Wilmer on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.