Prometheus: Natural Laws Can't Be Patented

The Supreme Court of the United States has re-affirmed the long-standing principle that laws of nature can not be patented, via its March 20 decision, Prometheus Laboratories v. Mayo Collaborative Services.

You can find the decision with one click.

I last had something to say about the underlying litigation in this blog a little over a year ago, when the Federal Circuit held in favor of Prometheus Labs,

Coming on top of the June 2010 decision in Bilski this is a new piece of evidence that this court believes patent laws have become too restrictive, that the domain of truly common knowledge, accessible to all, needs to be widened.,

In Bilski, you may remember, the Supreme Court reinvigorated a similar principle, one that disallows the patenting of abstract ideas. If carried to its logical conclusion, the argument that you can't patent abstractions would dis-allow all software patents, since "software" is by definition an abstraction. It isn't at all clear how logical the Court is willing to be, but what is clear is that in general it has decided to trim the bush of patentability.

On Monday, March 26, the Supreme Court sent a similar case, Myriad Genetics, back to the Federal Circuit for reconsideration in light of its new Prometheus ruling.  Myriad Genetics isn't exactly on all fours, I would caution the patent-dove side of that case against over-confidence at this point. But SCOTUS does seem to be dropping hints that its work of reforming patent law is not yet complete, and that it would apreciate reinforcements.

I'll just offer one brief quote from the Prometheus decision for now. In its unanimous decision, by Justice Breyer, the Supreme Court cited an amici brief by an important line-up of friends, "The American Medical Association, the American College of Medical Genetics, the American Hospital Association, the American Society of Human Genetics, the Association of American Medical Colleges,the Association for Molecular Pathology, and other medical organizations" who together said that if "claims to exclusive rights over the body’s natural responses to illness and medical treatment are permitted to stand, the result will be a vast thicket of exclusive rights over the use of critical scientific data that must remain widely available if physicians areto provide sound medical care."

So they are trimming a "thicket" (as above) rather than a bush.  I stand corrected.

I think it's the right move, whatever vegetative metaphor is to be employed.

Prometheus, Continued

I'll continue my discussion from yesterday without a lot of overlap.

It seems that the Federal Circuit, via its decision in Prometheus Labs, is suggesting that the doctrinal limit on the patenting of "physical phenomena" doesn't actually limit very much.

The above link will take you to Holman's Biotech IP Blog, which has a very extensive discussion of this case. Unfortunately Holman, like many of the blogosphere's commentators on IP matters, is a patent hawk. He believes the stronger is the legal protection for patent hoilders, the better. I, on the other hand, am a dogged patent dove, or maybe a dovish patent dog (allegorical zoos become confusing): so on my anarcho-cap bias alone I would have been happy to see this case go the other way.

It still might, because SCOTUS could yet get it. The Bilski decision indicates they want to do something about this field of law, and they obviously didn't think that decision was a proper vehicle for doing anything bold. Maybe this one will be more to their liking.

As to the "physical phenomena" limit in particular, I'll note that back in 1948 the court said that the characteristics of certain bacteria, "like the heat of the sun, or electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of the laws of nature, free to all men and reserved exclusively to none." Here's a link to that decision, by William O. Douglas.

Love that oracular Douglasite prose.

Prometheus and Classen

The next two big cases in the field of patent law, the first important post-Bilski matters worth watching, are: Prometheus v. Mayo, and Classen v. Biogen.

Classen involves a patent on methods of determining an immunization schedule.

Prometheus involves a patent on the method of setting the proper dosage of thiopurine to give to patients.

So the action, after KSR and Bilski, is moving to biopharm.

Thiopurine, by the way, is a family of drugs commonly used in the treatment of autoimmune disorders such as Crohn's disease or rheumatoid arthritis.