May 3, 2012 | 1:00-2:00 PM ET | Webinar
The Supreme Court unanimously held that claims directed to the relationship between the concentrations of blood metabolites and response to a therapeutic drug in two patents owned by Prometheus Laboratories, Inc. were unpatentable, stating that they “effectively claim the underlying laws of nature themselves.” This is a reversal of the Federal Circuit’s decision, which held that the claims did indeed encompass patentable subject matter. The Court also vacated the Federal Circuit’s decision in the Myriad gene patents case, sending it back for reconsideration based on the guidance offered in the Mayo ruling.
This landmark decision directly affects how universities approach patent decision making for diagnostic method patents, and will almost certainly impact the Myriad case, as well as a whole range of method claims surrounding other technologies. Indeed, the USPTO has instructed examiners to “continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance” along with some additional considerations based on the Supreme Court’s ruling. (find the full text memo here: http://www.uspto.gov/patents/law/exam/mayo_prelim_guidance.pdf)
Technology Transfer Tactics
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