Shrinking Territory: Patent Eligibility Of Biotechnological Inventions

Two landmark Supreme Court decisions have expanded the scope of patent ineligibility, created uncertainty, and are having a marked effect on innovation in the biotech field. Fitzpatrick, Cella, Harper & Scinto attorneys Leslie Kushner and Robert S. Schwartz consider the consequences of Mayo Collaborative Services et al. v. Prometheus Laboratories, Inc. (Mayo) and Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al. (Myriad). The authors note that about 40 percent of biotechnology patent applications pending at the time of a recent PTO Guidance had claims rejected as unpatentable, with the examiner citing Mayo or Myriad in the rejection.