March 21, 2012 | By Julie Samuels

The Supreme Court Gets it Right: No Patents on Laws of Nature

UPDATE: As expected, the Supreme Court send Myriad, the breast cancer gene case, back to the Federal Circuit for rehearing in light of its ruling in Mayo. Hopefully the Federal Circuit will accept the high court's invitation to hold that DNA is not patentable. 

We're happy to report that the patent system is getting a much need jolt of sanity, in the form of a clear Supreme Court ruling affirming a basic, but sometimes forgotten, principle: laws of nature, and obvious methods of working with them, are not patentable.

Earlier this month, we bemoaned the Federal Circuit’s propensity to further confuse the standard for unpatentable subject matter in the wake of In re Bilski. Specifically, we wrote that a recent ruling in Ultramercial v. Hulu “could impermissibly (and dangerously) expand the scope of patentable subject matter.” 

So, we were pleasantly surprised yesterday by the Supreme Court’s ruling in Mayo v. Prometheus, where it unanimously struck down a patent covering a medical diagnostic test. You may remember that three categories of "inventions" are not patentable: laws of nature, natural phenomena, and abstract ideas. In this case, Prometheus' patent covered a method of giving a drug to a patient, testing the metabolite levels in the patient, and tweaking the dosage accordingly. Correctly, the Supreme Court held the patent invalid because it took laws of nature and merely included “well-understood, routine, conventional activity previously engaged in by researchers in [the] field.”

Hopefully, the Federal Circuit will heed the message that, as the Supreme Court put it, “simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” This is particularly important because, as we’ve said before, merely tying an idea that is otherwise abstract – in the case of Ultramercial, for example, displaying an ad before a viewer can access content – to the Internet, without more, is not enough to make the idea patentable.

As more and more of our everyday lives go online, using the Internet as a medium should not be enough to support a patent monopoly on an otherwise abstract idea.

Throughout its opinion, the Supreme Court reiterated its “concern that patent law not inhibit further discovery by improperly tying up the future uses of the laws of nature.” We couldn’t agree more. In light of Mayo, it seems likely the Supreme Court will send some high-profile cases – like Ultramercial and Myriad (the breast cancer gene case) – back to the Federal Circuit for reconsideration. If so, the Federal Circuit should reverse its rulings that allowed dangerous patents representing nothing more than abstract ideas and laws of nature to exist, since these are the very types of patents that ensure the patent system fails to do its core job: protect innovation in America.  


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