Originally published in Law360, New York, May 21, 2012 -- On March 26, 2012, the U.S. Supreme Court issued a much anticipated GVR (grant [certiorari], vacate and remand) order in the Association for Molecular Pathology v. the United States Patent Office (a.k.a. ACLU v. Myriad), remanding the case to the Federal Circuit for reevaluation in light of the Supreme Courts' recent decision in Mayo Medical Laboratories v. Prometheus Laboratories 566 U.S. ____ (US 2012). The Prometheus decision has been extensively discussed in the media but its possible impact on the Federal Circuit decision in Myriad has received much less attention.
Both cases deal with the patent-eligibility of certain diagnostic methods under 35 U.S.C. § 101. 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter … may obtain a patent therefor, subject to the [other conditions for patentability under the Patent Act].” Although this language is broadly cast, judicial exceptions to patent-eligible subject matter pertaining to laws of nature, natural phenomenon and abstract ideas have become very significant in light of Supreme Court decisions and particularly the decision in Prometheus.
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