Prometheus Bound or Unbound? Patent Eligibility Redux

The patent law commentariat (including us) built up Bilski as a big Supreme Court case that might change patent law as we know it by eliminating business methods from the scope of patent protection. It didn’t. So we will be more circumspect in approaching the Supreme Court’s next case on the scope and limit of what is eligible to be patented—Mayo v. Prometheus—a case regarding the patentability of a process of measuring when a patient is getting too much or too little of a drug. Interested readers will find the complete transcript of yesterday’s oral argument here, and a thorough recap of the argument from Lyle Denniston of SCOTUSBlog. In questioning counsel, the justices appear to be wrestling with the question of how to draw a discernible line between an unpatentable law of nature and a patentable process applying that law. But no hypothetical scenario posed to the attorneys for the parties or the Government seemed to elicit a satisfactory approach to that question. Whether the members of the Court will find an answer among themselves remains to be seen in the opinion they reach, which should issue later in this Supreme Court term.