Friday, December 17, 2010

Post-Bilski Case From the Federal Circuit: Claims Still Patentable

Today the Federal Circuit released an opinion in Prometheus v. Mayo.  This case was on remand from the Supreme Court after the Bilski decision in June 2010.  The claims in question are directed to certain medical diagnostic treatments.  The Federal Circuit had originally found the claims patentable under 35 U.S.C. §101 in view of its strict "machine or transformation" test in its Bilski decision.  After the Supreme Court's Bilski case had modified the Federal Circuit's test to something less strict (the Supreme Court test is less than a model of clarity, but it's less strict than the Federal Circuit's test), the Supreme Court granted cert in Prometheus, vacated the Federal Circuit opinion, and remanded the case so the Federal Circuit could reconsider the issue.

I thought it odd that after its Bilski decision, the Supreme Court granted cert and remanded the case to the Federal Circuit.  If the Federal Circuit found the claims patentable under its stricter Bilski test, surely it would do the same under the Supreme Court's less strict test?  Today's answer to that question is "yes."

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