Surprise patent setback stuns biotech


Paul Sutton

Two recent US court decisions have important implications for patent attorney practice as well as for the biotech sector, as Paul Sutton reports.

The US Supreme Court, on March 20, unanimously invalidated a broad medical diagnostic patent owned by the Prometheus Laboratories Inc unit of Nestle SA and asserted in a patent infringement lawsuit against Mayo Collaborative Services (doing business as Mayo Medical laboratories), thereby giving a significant victory to the medical profession (Mayo v Prometheus, 566 US [2012]).

The Prometheus patents—US patent numbers 6,355,623 and 6,680,302—include claims which cover a method for determining the proper dose of a drug used to treat autoimmune disorders. By invalidating these patents, medical providers have potentially been saved from a host of broad newly issued patents covering medical diagnostic tests.

Nervous physicians in the US have been at risk of infringing such patents merely by using scientific research in arriving at patient treatment options. The court cited the provisions of the US Patent Act, which dictates that discoveries based upon the “laws of nature” cannot be patented. The court held that a process which recites a law of nature, likewise, cannot be patented, and it reversed the Federal Circuit’s judgment favouring Prometheus.

Mayo v Prometheus, Myriad, pharmaceuticals, biotechnology