Mayo, Prometheus Medical Patent Case Overturned by SCOTUS

By Tanya Roth, Esq. on March 21, 2012 | Last updated on March 21, 2019

Companies cannot patent their observations on a natural phenomenon. That's what the U.S. Supreme Court said on Tuesday, in a decision that overturned a Federal Circuit Court of Appeals decision.

The Supreme Court Justices voted unanimously in the case, rejecting two patents on a blood-monitoring method used to determine the optimal dosage for a drug.

The case, Mayo Collaborative Services v. Prometheus Laboratories, involved patent infringement. Mayo was a customer of Prometheus and they bought and used a treatment that involved determining the correct levels of medicine to give to people with gastrointestinal disorders. In 2004, they said they would begin using their own version of the Prometheus test.

Prometheus sued for patent infringement, but Mayo won the first round in district court. The case went to the Federal Circuit Court of Appeals, which held that the method used by Prometheus was a "transformation" which could be patented.

Prometheus argued that its system for measuring the appropriate doses of drugs added to natural laws, thus making its process patentable.

While this argument worked at the Federal Circuit, this argument didn't fare well at the Supreme Court. The notion of patenting the process could have far reaching consequences, argued Mayo. For example, doctors may fear making certain treatment recommendations based on commonly used medical measurements out of fear of a lawsuit.

Mayo also argued that the upholding of the patents would "work disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries."

In agreement with Mayo's argument and feeling that the patenting of the process could have the adverse effect of inhibiting further discoveries, the Supreme Court ruled in favor of Mayo.

The decision was delivered by Justice Stephen Breyer.

Related Resources:

Mayo Collaborative v. Prometheus (FindLaw Cases)
U.S. top court rejects two medical test patents (Reuters)
Federal Circuit Court of Appeals (FindLaw)