Mayo v. Prometheus is a seminal case which defines the ideas or invention eligible for patent protection. For a few years now, the patent bar has been debating the scope of inventions that might be eligible for patent protection. The Bilski case decided a few years ago pushed the realm of patent-eligible subject matter into a easy to understand test, namely, the machine or transformation test. Although the machine or transformation test was described as merely a clue to eligibility, practitioners and the USPTO appear to have latched onto the machine or transformation test. The thinking was that if the invention could pass the machine or transformation test, then the invention would be eligible for patent protection.
Under Mayo v. Prometheus, the U.S. Supreme Court reiterated that the machine or transformation test is merely a clue. Eligibility of patent protection does not turn on the machine or transformation test. Rather, the US Supreme Court provided the following analytical framework to determine whether a claimed invention is eligible for patent protection. The preliminary assumption is that all inventions to a certain degree rely on one or more fundamental laws of nature. However, the claim must not be too broad so as to preempt the use of a natural law of nature. The claims must be examined so as determine whether those elements or combination of elements other than the fundamental law of nature contain an inventive concept.
In Mayo, the claim language which was determined to be ineligible for patent protection is instructive on applying this analytical framework. In particular, the invention in Mayo was related to a drug which was metabolized differently by different people. As a result, a single strength for the general population was effective for some but not everyone. The invention contemplated utilizing a diagnostic test to determine how the particular patient metabolized the drug and altering the prescription based on the results of the diagnostic test. The claims recited the specific ranges of the diagnostic test which indicated when the prescription should be increased or decreased. It appears that the Court recognized the specific ranges as being a natural law of nature, or in other words, a description of how the body metabolized a particular drug.
In the prior art, all aspects of the claimed method were known except for the specific ranges. In analyzing whether the claimed invention was eligible for patent protection, the Supreme Court compared the prior art to the claimed invention without regard the particular ranges and held that no inventive concept was being claimed. All steps in the claimed method were well known in the prior art. Hence, the invention was not eligible for patent protection.
The opinion also instructed against including as patent eligible an invention merely because the claimed invention is limited to a particular technological environment or included an insignificant post solution activity.
In response to the Mayo decision, it is important that one have a clear definition of the invention and provide a layered approach to drafting a patent application. A broad claim should still be included and that might be rejected as being ineligible for patent protection. However, other claims specifically focusing on the steps and not the basic law of nature should be included. Patent applications should still be drafted as broad as possible but it should be layered until the specific embodiment disclosed by the inventor is disclosed in the patent application. This is especially true for method claims and those claims which appear to be directed to a known causal relationship, rule of thumb or other mere discovery.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.