The Supreme Court and Patentable Subject Matter: Can Prometheus be Bound?

In March 2012, in Mayo Collaborative Servs. v. Prometheus Labs, the Supreme Court unanimously invalidated a patent on a method of determining when levels of a metabolite of the drug thiopurine in a person’s blood are too high or low for effective treatment of autoimmune disease.  The Court held that the claim was to an unpatentable “law of nature.”  The opinion came as a surprise to the Federal Circuit and many observers, revealing a lack of common understanding between the Supreme Court and many others in the patent system.  The opinion at once became subject to significant criticism.  Moreover, the outer bounds of the opinion are uncertain and subject to debate.  In its opinion the Court held that “[i]f a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”  Some commentators think this opinion will be limited to diagnostic correlations, while others think that this language could sweep so broadly as to call even software patents into question.  This Teleforum will discuss these issues, as well as whether the Supreme Court’s patentable subject matter jurisprudence is coherent, predictable, and administrable.  Finally, participants are invited to consider how the Court might do better in the area of patentable subject matter. 

Featuring:

• Mr. Howard J. Klein, Klein, O'Neill & Singh, LLP
• Prof. Ronald Mann, Columbia Law School
• Ms. Christina M. Mulligan, Postdoctoral Associate and Lecturer in Law, Yale Law School
• Mr. Daniel Ravicher, Public Patent Foundation, Cardozo Law School
• Moderator: Prof. David Olson, Boston College Law School

Call begins at 1:00 p.m. Eastern Time.

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