Intellectual Property

Mayo Laboratories v. Prometheus

Medical trademarks and the future.

By Paul Onderick

In March, the United States Supreme Court unanimously decided that Prometheus Laboratories was not entitled to a patent on a method involving monitoring blood levels of a metabolite and adjusting medication dosage based on the blood levels. The Court decided that the process claimed was a law of nature and thus was not proper subject matter for patent protection. The decision considers a section of the Patent Act, which has been interpreted to mean that laws of nature, natural phenomenon and abstract ideas are not patentable subject matter. This standard seems simple but has proven devilishly difficult to interpret.

While the Mayo Laboratories v. Prometheus decision directly affected the biotechnology industry and its ability to obtain patent protection on certain types of medical procedures, it appears that the decision may have a much more far reaching affect. Since the decision was made, the justices of the Supreme Court have sent a number of other patent cases back to the Federal Appeals Court with orders to reconsider them in view of Mayo v. Prometheus.

For example, the Supreme Court has ordered the reconsideration of the patents on isolated breast cancer related DNA and remanded for reconsideration a case involving a patent's software and distributing products over the internet. Accordingly, this decision may call into question the validity of patents in many different areas including software, biotechnology and medicine.