How the Supreme Court Got It Right in Mayo v. Prometheus

Vol. 10 No. 1

By

George R. McGuire is chairman of the Intellectual Property Group at Bond, Schoeneck & King, PLLC. Mr. McGuire is a registered patent attorney whose practice focuses on patent and trademark preparation and prosecution and litigation, copyright litigation, and counseling on licensing and other technology-based contracts. In addition to his practice, Mr. McGuire is also an adjunct professor at Syracuse University College of Law where he teaches Internet Law. Blaine T. Bettinger is an intellectual property attorney at Bond, Schoeneck & King, PLLC in Syracuse, New York, whose practice focuses on patent prosecution and litigation, copyright litigation, and trademarks. Dr. Bettinger has a Ph.D. in biochemistry and molecular biology.

In the aftermath of the Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012) decision, courts have applied, to both diagnostic and nondiagnostic method claims, the Supreme Court’s guidelines to determine patentability under 35 U.S.C. section 101.1 Though the Court’s guidelines may be far from bright-line rules for all method claims, they offer clear guidance for claims to diagnostic methods. The Court’s holding also prevents preemption of an abstract idea or law of nature by a claim so broad that there is no significant limitation. Otherwise the patentee could claim every possible application of the abstract idea or law of nature. This was the proper decision.

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