Deborah L. Lu, Ph.D., Shareholder and member of the firm’s Intellectual Property practice group, was quoted in the Bloomberg BNA Life Sciences Law & Industry Report article “Confusion Predicted after High Court Rules Diagnostic Method Claims Not Patent Eligible.”
The article discusses a recent unanimous U.S. Supreme Court decision in the case of Mayo Clinic v. Prometheus Laboratories , which reaffirmed that processes claiming natural laws or phenomena are not patent eligible. Dr. Lu commented that the decision is in accordance with past decisions “in that ‘analyzing’ or ‘comparing’ steps are considered patent-ineligible subject matter.”
She further commented that this decision means that “current diagnostic patents will be under increased scrutiny and that many patents may be invalidated under this decision.” Biotechnology, pharmaceutical and life sciences patents have increasingly been the subject of U.S. Supreme Court litigation in recent years as the burgeoning industry’s percentage of patent applications has skyrocketed. Vedder Price’s Intellectual Property group has been at the forefront of this industry from the outset and routinely counsels clients with respect to issues of patentability and patent defense.
Related Vedder Price publications:
Supreme Court Applies "Machine-or-Transformation Test" to Diagnostic Patience (IP Client Bulletin March 27, 2012)
Federal Circuit in Myriad Affirms Patentability of Isolated DNA Claims (IP Client Alert August 1, 2011)
Supreme Court’s Limited Decision in Bilski Leaves the Door Open for Business Method Patents (IP Client Alert June 28, 2010)
The US Supreme Court’s Ruling in Bilski v. Kappos: Hedging Against Bright-Line Rules (IP Strategies August 2010)