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Supreme Court Strikes Down Prometheus Patent on Drug-Dosage Method

March 20, 2012

Related Professionals: Arner, Erika Harmon

Media Mention

In an unanimous decision in Mayo Collaborative Services vs. Prometheus, the Supreme Court ruled that the patent issued to Prometheus Labs was invalid because it covered a law of nature, not an innovative new process. Finnegan partner Erika H. Arner commented on the decision stating, “Lower courts and the Patent Office will likely struggle with the question of what is ‘enough’ added subject matter.” Additionally, Ms. Arner said, “this latest ruling was surprising because recent patent decisions have been divided by courts and favored broader, rather than narrower patents. Rather than emphasizing, as it usually does, that Congress intended the scope of patent protection to be as broad as possible, the Mayo Court focuses on the judge-made exclusions from patentable subject matter, reasoning that narrower patent protection may better promote innovation. This apparent shift by the full Court may signal the need for clarification by Congress.”