Prometheus: The Supreme Court Redefines the Patentability of Diagnostic Inventions
Andrew Kumamoto and Cora L. Schmid
Affiliation: HelixIP LLP, 400 Seaport Court, Suite 105, Redwood City, CA 94063.
Keywords: Patents, personalized medicine, patentable, unpatentable, Prometheus, Myriad
The United States Supreme Court recently issued an opinion regarding the patentability of claims directed to
diagnostic methods in Mayo Collab. Service v. Prometheus Lab., Inc. In this opinion, the Supreme Court held that correlations
between metabolite levels in the human body and either therapeutic efficacy or adverse effects are unpatentable laws
of nature. It further found that a patent claim to a method including such a correlation is unpatentable if the remainder of
the claim contains only conventional and well-known steps. The Prometheus decision creates uncertainty regarding the
scope of patentable subject matter, particularly in the fields of diagnostic and personalized medicine, that will remain until
future cases apply this new doctrine.
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