September 12, 2012 Articles

Making Sense of Prometheus

In the decision, the Supreme Court explained the arguments for both a broad view and a narrow view of Section 101 of the Patent Act.

By Marc Goldman and Bradford Lyerla

Coming only two years after its decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010),the Supreme Court's unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),constitutes the Supreme Court's latest attempt to resolve a longstanding tension in patent law concerning what subject matter is eligible for patent protection under Section 101 of the Patent Act. In the Prometheus decision, the Supreme Court explained the arguments for both a broad view and a narrow view of Section 101 and then set forth an approach that purported to chart an intermediate course, albeit one that narrowed the scope of patentability as compared with the view articulated by the Federal Circuit.

The Court identified two principal factors for determining whether an invention is patentable or whether it constitutes a nonpatentable "law of nature, natural phenomenon or abstract idea": whether, after setting aside any law of nature, natural phenomenon, or abstract idea encompassed in the claim, a patent contains an inventive concept and whether the patent claims fewer than all applications of the law of nature, natural phenomenon, or abstract idea. With respect to how these factors should be applied and what they mean, however, the opinion is often either vague or contradictory, providing practitioners grist to argue for or against patentability in almost any case. The vague and contradictory nature of the opinion may result from difficulties inherent in resolving the tensions in this area of the law given the tasks the Court set forth—to disallow the patentability of laws of nature, natural phenomena, and abstract ideas even when they are embodied in concrete products and processes but to avoid eviscerating all of patent law. Despite multiple decisions interpreting Section 101, the Court has yet to clearly explain how it is possible to achieve both goals in a principled fashion.

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