Bilski: what next for life sciences
30 June 2010
Managing Intellectual Property
Jeffrey Whittle, Michael Samardzija and Michael Hay analyse the Bilski decision from a life sciences perspective, and argue it is a victory for these industries
Wasting little time and with the ink barely dry on the
Bilski v Kappos
opinion, the Supreme Court on Tuesday followed that decision with an answer in the eagerly awaited matter of
Mayo v Prometheus
. The Court granted
certiorari
in
Prometheus
, vacating and remanding the case for consideration in view of the Court's decision in
Bilski
.
In the
Prometheus
case, Mayo Clinic challenged two Prometheus patents (US patent numbers
6,355,623
and
6,680,302
), alleging the claims were directed to patent ineligible subject matter. The Prometheus patent claims were generally directed to methods for improving administration of a drug, including active steps of "administering" a drug and "determining" metabolite levels.
The Federal Circuit overturned the District Court decision, applying the machine-or-transformation (MOT) test of
In re Bilski
(Fed Cir 2008), and finding the Prometheus claims valid. Although the Federal Circuit found that certain aspects of the claims were...
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