Biotech Industry takes Notice of Patent Rejection Ruling

An second article in this morning's Wall Street Journal (subscription) reported the Supreme Court's "jolting the biotechnology industry with a unanimous ruling that threw out two medical-testing patents and suggested companies need to do more to prove their discoveries are really new, sparking uncertainty about the booming field of personalized medicine, in which some of the world's largest drug companies are vying to tailor treatments to patients' unique make-ups by using diagnostic tests."

"Although 'laws of nature, natural phenomena, and abstract ideas,'" the Court said in its 28-page decision yesterday, "are not patentable subject matter under §101 of the Patent Act, Diamond v. Diehr, 450 U. S. 175, 185 (1981), 'an application of a law of nature . . . to a known structure or process may [deserve] patent protection,' id., at 187. But to transform an unpatentable law of nature into a patent eligible application of such a law, a patent must do more than simply state the law of nature while adding the words 'apply it.' See, e.g., Gottschalk v. Benson, 409 U. S. 63, 71–72 (1972). It must limit its reach to a particular, inventive application of the law……

"This Court has repeatedly emphasized a concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like. See, e.g., Benson, 409 U. S., at 67, 68. Rewarding with patents those who discover laws of nature might encourage their discovery. But because those laws and principles are 'the basic tools of scientific and technological work,' id., at 67, there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to 'apply the natural law,' or otherwise forecloses more future invention than the underlying discovery could reasonably justify. The patent claims at issue implicate this concern. In telling a doctor to measure metabolite levels and to consider the resulting measurements in light of the correlations they describe, they tie up his subsequent treatment decision regardless of whether he changes his dosage in the light of the inference he draws using the correlations. And they threaten to inhibit the development of more refined treatment recommendations that combine Prometheus’ correlations with later discoveries. This reinforces the conclusion that the processes at issue are not patent eligible, while eliminating any temptation to depart from case law precedent."