Diagnostic Patents Can’t Get Past Mother Nature


Life sciences companies continue to lose in court over the patentability of diagnostic method claims, highlighting the difficulties in getting patents on medical diagnostic methods.

In a recent district court case, Mayo Collaborative Services LLC persuaded a court to toss an infringement complaint against it because the patent asserted against it claimed an invention based on a law of nature. Laws of nature aren’t eligible for patents.

The issue of which diagnostic claims are eligible for patenting has been roiling the life sciences community since 2012 when the U.S. Supreme Court found a diagnostic method claim patent ineligible in Mayo Collaborative Servs. v. Prometheus Labs., Inc.

The Mayo ruling and its progeny have made it more difficult for life sciences companies to protect their intellectual property, and some groups, including the Intellectual Property Law Owners Association, the American Bar Association, and the American Intellectual Property Law Association (AIPLA), are urging Congress to amend the patent law.

In the most recent case—in which Mayo was a defendant not the patent owner— the court found the plaintiff’s patent claims on a method for diagnosing neurotransmission disorders more quickly and accurately were invalid because they merely applied routine and conventional techniques to a law of nature.

The ruling is Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 2017 BL 272965, D. Mass., No. 15-cv-40075, 8/4/17.

Read my full story on the ruling here.

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