The Future of Personalized Medicine After Prometheus:
Exploring the Limits of Patentability
IP lawyers don’t think much of the U.S. Supreme Court’s grasp of IP. Only a quarter of poll-takers at the IP Chat Channel webinar agreed with the Court’s legal reasoning in its unanimous Prometheus opinion. Yet the attendees also expect to hear more from the justices: Nearly two-thirds believe the Supreme Court will eventually hear the Myriad gene-patenting case which has been remanded to the Federal Circuit.
As far as the impact of the Prometheus decision goes, a third believe the decision “will pretty much kill” diagnostic method claims, while the rest believe it depends how those claims are drafted. Most lawyers were surprised by the Court’s decision to deny patentability of the Prometheus patents, despite the common wisdom that the Court doesn’t take cases to uphold the result below.
Do you think the litigated Prometheus patents were valid under 101?
2.Were you surprised by the Supreme Court’s decision?
3.Do you think the Supreme Court’s legal reasoning is correct?
4.What will be the impact of the decision on diagnostic method claims?
a)Little effect 0%
b)Depends how they are drafted 66%
c)Will pretty much kill them 34%
5.What will the Federal Circuit do with the remand of Myriad?
a)Same decision as before: patentable subject matter 44%
b)Adopt DOJ’s position: CDNA claims valid, isolated DNA claims not 41%
c)All claims invalid 15%
6.Will the Supreme Court eventually hear the Myriad case?