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Supreme Court issues first major patent decision of the term

Its ruling in Mayo v. Prometheus Labs might signal the end for human gene patents

Relatively hot on the heels of its 2010 ruling in Bilski v. Kappos that applied the machine-or-transformation test to business method patents before determining that such a test could create uncertainty regarding the patentability of things such as diagnostic medicine techniques, the Supreme Court tackled a similar issue earlier this week.

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the high court explored the question of whether the correlation between blood test results and patient health is patentable. The plaintiffs argued that the patents in dispute are naturally occurring phenomena that should not qualify for patent protection. In a unanimous decision, the court agreed, ruling Tuesday that Prometheus cannot patent a medical test that relies on such correlations between drug dosages and treatment.

“For these reasons, we conclude that the patent claims at issue here effectively claim the underlying laws of nature themselves,” Justice Stephen Breyer wrote. “The claims are consequently invalid.”

The court said that similar to Albert Einstein not being able to patent E=mc2, or that Isaac Newton could not have claimed ownership of the law of gravity, Prometheus cannot patent a test kit that correlates a patient’s blood chemistry with the best drug doses for treatment.

“Such discoveries are ‘manifestations of . . . nature, free to all men and reserved exclusively to none,’” the opinion states.

The high court’s decision overturns a Federal Circuit ruling that upheld Prometheus’ patents.

Mayo v. Prometheus Labs may have a significant impact on future cases involving the patentability of human genes. According to Reuters, the American Civil Liberties Union (ACLU) believes this ruling is a good omen for its case against Myriad Genetics.

"We were really pleased with the Prometheus decision," Sandra Park, an ACLU attorney representing researchers and breast cancer patients to invalidate Myriad Genetics' right to patent isolated breast cancer genes, said. "The decision bodes well for the ultimate outcome of the Myriad case."

For more, read Reuters.

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