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ARTICLE · 17 DECEMBER 2012

An Update On Patenting Personalized Medicine After Prometheus

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While the Supreme Court just granted certiorari in Myriad, case law surrounding the patent-eligibility of diagnostic and therapeutic personalized medicine has continued to develop in the wake of Mayo v. Prometheus.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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While the Supreme Court just granted certiorari in Myriad, case law surrounding the patent-eligibility of diagnostic and therapeutic personalized medicine has continued to develop in the wake of Mayo v. Prometheus. The good news for innovators is that the USPTO is still granting patents in the field of personalized medicine. The bad news is that the Federal Circuit is still invalidating claims as "indistinguishable" from those presented by Prometheus.

The USPTO Approach

Earlier this year, the USPTO issued examination guidelines for evaluating method claims under 35 USC § 101. The guidelines outline a three-step inquiry for examining claims that may fall under Prometheus:

  1. Is the claimed invention directed to a process, defined as an act, or a series of acts or steps?

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