Mayo v. Prometheus: BIO Statement on Supreme Court Decision

Posted under Blog, Companies, Department of Justice, Diagnostics, Funding, laws of nature, Mayo, Medical Devices, Medical Supply, method patent, nature, patent, Patently BIOtech, Pharmaceuticals, Prometheus, Public Policy, Startups, Supreme Court, Universities, Videos by biotechnow@bio.org (Biotechnology Industry Organization)

By Hans Sauer, Deputy General Counsel for Intellectual Property, Biotechnology Industry Organization

We are surprised and disappointed in the Court’s decision, which disregarded the considered judgment of the Executive Branch experts and numerous amici such as BIO, who warned about the unintended consequences of attempting to use patent eligibility as a basis to strike down these patents for biomarker-based diagnostic methods.

While we are still analyzing the opinion, we are concerned that it introduces new and confusing concepts into the traditional body of patent law, which patent examiners and lower courts will struggle to consistently and rationally implement.  While the opinion’s lack of guidance may limit its practical impact, we are troubled that the Court’s opinion fails to appropriately recognize the importance of personalized medicine, and of the research and investment incentives needed to develop new individualized therapies for untreated diseases.

BIO will work with the Administration and the U.S. Patent and Trademark Office to ensure that the future application of this opinion does not irrationally restrict the ability of innovators to protect inventions that lead to cures, medical breakthroughs, and other technologies that make our lives and our environment cleaner, safer and healthier.

BIO’s Prometheus v. Mayo Amicus Brief Filed

Posted under biomarkers, Blog, Companies, Diagnostics, Funding, mayo clinic, Medical Devices, Medical Supply, Patently BIOtech, personalized medicine, Pharmaceuticals, Public Policy, Startups, Supreme Court, U.S. Supreme Court, Universities, Videos by biotechnow@bio.org (Biotechnology Industry Organization)

BIO filed an amicus brief in the Prometheus v. Mayo Clinic case.  In this case the Supreme Court is being asked to decide whether diagnostic and personalized medicine claims that depend on a correlation of observed phenomena should be excluded from the patent system at the outset, as patent-ineligible abstract ideas or “laws of nature.”

BIO’s brief argues that these judicially-created exclusions from patent-eligibility have traditionally been used only under narrow circumstances, and that their expansion to biomarker-assisted therapeutic methods is unwarranted, legally unsound, and fraught with serious unforeseen consequences on investment and R&D incentives in the field of personalized medicine.

Read the full amicus brief