Many businesses and their patent counsel are upset by the Supreme Court’s unanimous decision in Mayo Collaborative Services v. Prometheus Labs because the March 20 ruling cuts back on the types of inventions that are patentable—and no one knows by how much.
“It is not really clear what the boundaries are,” says Prof. Rebecca Eisenberg of University of Michigan Law School. “There’s a lot of anxiety about what [Mayo] means.”
The only new thing the patents claimed was the information listed in the third step: the levels at which thiopurine metabolites were too low to be medicinally efficacious and too high to be safe. This information could constitute an important scientific discovery, but it was an unpatentable law of nature, the Supreme Court held.
Clever drafting, however, may not save some important patents—including patents on human genes. There are more than 3,000 such patents in the U.S., covering more than one-fifth of all human genes. And the first to be struck down may be Myriad Genetics’ controversial patents on two cancer genes.