Mayo Collaborative v. Prometheus Laboratories (566 U.S., 2012 Mar 20)

Decision Parameters

Decisions It Cites Decisions That Cite It
Rules & Quotes
[NATURE] {1} We must determine whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws. ... upholding [these] patents would risk disproportionately typing up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.

[NATURE] {2} If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example, could not simply recite a law of nature and then add the instruction "apply the law".

[NATURE] {3} Purely "conventional or obvious" "[pre]-solution activity" is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. Flook, 437 U.S. at 590; see also Bilski, 561 U.S. at ___ (slip op., at 14) ("[T]he prohibition against patenting abstract ideas 'cannot be circumvented by' . . . adding 'insignificant post-solution activity'" (quoting Diehr, supra, at 191-192)). ... To put the matter more succintly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of these regularities.

[NATURE] {4} [Diehr] nowhere suggested that all these steps, or at least the combination of those steps, where in context obvious, already in use, or purely conventional. And so the patentees did not "seek to pre-empt the use of [the] equation", but sought "only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process." These other steps apparently added to the formula something that in terms of patent law's objectives had significance - they transformed the process into an inventive application of that formula.

[NATURE] {5} The Court has repeatedly emphasized ... a concern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature. ... And so there is a danger that the grant of patents that tie up their use [laws of nature] will inhibit future innovation premised upon them, a danger that becomes more acute when a patented process amounts to no more than an instruction to "apply the natural law", or otherwise forecloses more future invention that the underlying discovery could reasonably justify. The presence here of the basic underlying concern that these patents tie up too much future use of laws of nature simply reinforces our conclusion that the processes described in the patents are not patent eligible, ...

[NATURE] {6} Thus, this step tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists who work in the field. Purely "conventional or obvious" "[pre]-solution activity" is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. Flook, 437 U. S., at 590; see also Bilski, 561 U. S., at ___ (slip op., at 14) ("[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . . adding ‘insignificant post-solution activity’" (quoting Diehr, supra, at 191–192)).


Review Articles and Papers
Prometheus Unbound: the untethering of laws of nature and patent eligibility from scientific reality, Robert Sachs and Jennifer Bush, BilskiBlog, March 2013


Brief Comments and Observations

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