UnIP (UnIntellectual Property): Method Patent for Predicting Whether a Patient Would Respond to Medical Treatment

The USPTO Board held that a claimed method for predicting the outcome of a patient’s response to a clinical treatment based on an applied algorithm showing results of previous patient treatment and response and displaying the same was not patentable as a “law of nature.” The Board followed the landmark decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc., where the United States Supreme Court affirmed that “laws of nature, natural phenomena, and abstract ideas” are not patentable. 132 S. Ct. 1289, 1293 (U.S. 2012) (internal citations omitted). The Board’s Opinion confirms that to transform a phenomenon, process, or concept into a patent-eligible application, the applicant must do more than simply state the phenomenon, process, or concept while adding the words “apply it.” Put another way, this applicant failed to satisfy the machine or transformation test. Ultimately, the Board noted that the reorganization of treatment options was also fairly obvious.

This decision seems consistent with Prometheus and the policy of prohibiting patents for ideas and laws of nature, which would adversely affect innovation in the future. This area of patent law continues to evolve, but the general proposition that you can not patent abstract ideas, even as a new application in a particular methodological way, remains true.

In Ex parte Potts (Case No. 2011-004700, in Application Serial No. 11/690,745, decision issued July 17, 2012)


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