Mayo v. Prometheus: The Eternal Conundrum of Patentability v. Patent Eligibility

Abstract

In 2012 the Supreme Court adjudicated a profound medical claim in Mayo Collaborative Services v. Prometheus Laboratories Inc., which has the potential of radically altering patent law and § 101 jurisprudence. The judgment came as a shock to the patent community; however, judgments of the lower courts therewith have echoed similar decisions to show the judgment in Prometheus simply cited Supreme Court jurisprudence. This paper talks about the judgment and its effects on the rulings of the Federal Circuit as well as District Courts, and its effect on medical claims. It gives an insight into patent laws in the United States and where it is headed. While the Federal Circuit remains split as to how narrowly it would construe Prometheus so as to apply it to other cases, its forthcoming opinion en banc on CLS Bank Int’l v. Alice Corp. Pvt. Ltd. is likely to unify its interpretation. What is yet to be seen is how broadly the District Courts will see the judgment so as to judge similar medical claims. The process has already been started, as will be explained in this paper, the effects of which however are too early to be discussed.