Background
In March 2012 it was controversially held by the U.S. Supreme
Court in Mayo Collaborative Services v. Prometheus
Laboratories, Inc. (2012) (Prometheus decision) that a
"relationship" between the concentrations of blood
metabolites and response to a therapeutic drug, claimed in patents
owned by Prometheus Laboratories Inc., was not patentable because
it represented a "principle of nature". The Court stated
that to be patent eligible a claim must contain "features that
provide practical assurance that the process is more than a
drafting effort designed to monopolize the law of nature
itself." The Court considered that the steps defined in the
"Prometheus patent" consisted of "well-understood,
routine, conventional activity already engaged in by the scientific
community". Thus, the Court found that nothing of value was
added to the law of nature and therefore the claimed process was
not patent eligible.
