Jenner & Block

"Making Sense of Prometheus," Intellectual Property, ABA Section of Litigation

In this article, Jenner & Block Partners Marc A. Goldman and Bradford P. Lyerla critique the March 2012 U.S. Supreme Court decision Mayo Collaborative Services v. Prometheus Laboratories, Inc.  The decision attempted to resolve issues of what subject matter is patentable under Section 101 of the Patent Act, specifically addressing the long-standing view that “laws of nature, natural phenomena, and abstract ideas” are not patentable.  The Court identified two principal factors for determining patentability: (1) whether the patent contains an inventive concept and (2) whether the patent claims fewer than all the applications of the “laws of nature, natural phenomenon, or abstract idea.”  However, the authors argue, Prometheus is often “vague or contradictory” in how these factors should be applied. “Given the tensions within Prometheus,” they write, “the Federal Circuit will have a difficult task in articulating a principled basis to distinguish what is patentable under Prometheus from what is not and may ultimately be forced to rely on a ‘you know it when you see it’ sort of approach.