Patent Law Practice Center

Bilski’s Impact On Life Science Patents

Today’s guest post was written by our friends at DLA Piper, Richard Mulloy (Partner in the Patent Litigation practic)  and Lisa Haile (Patent Prosecution partner and the co-chair of DLA Piper’s Global Life Sciences sector).

Two significant developments arose out of Bilski regarding life science patent claims.  First, the Supreme Court’s endorsement of the machine-or-transformation test as one tool to analyze claims under 35 U.S.C. §101 provides some guidance to patent applicants and litigants. Second, the Court’s suggestion that the Federal Circuit develop “other limiting criteria” to analyze claims under §101 provides additional flexibility to develop tests more applicable to the life sciences, where the machine-or-transformation test is not particularly appropriate.

The Federal Circuit will have an opportunity to provide additional guidance in two pending cases: Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403, and Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634 and 2006-1649.  The Prometheus and Classen cases were both remanded to the Federal Circuit for additional consideration in light of Bilski.   (more…)