Federal Circuit Confirms Diagnostic and Therapeutic Methods Can be Patentable Subject Matter
October 10, 2009
By: John R. Van Amsterdam
BNA Pharmaceutical Law and Industry
On September 16, 2009, in the case of Prometheus Labs., Inc. v. Mayo Collaborative Servs., the Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision that has important implications for the biotechnology and pharmaceutical industries. The decision confirms that medical diagnostic and related treatment methods can be patentable subject matter.
The patent-eligibility of such claims was in doubt in the wake of the Federal Circuit’s October 30, 2008 In re Bilski decision. In Prometheus, the Federal Circuit held that clinical diagnostic methods that include analysis of a sample are patent-eligible subject matter. Likewise, treatment methods that include analyzing the effect of a drug on a human also are patent-eligible.
