Tech Transfer Central

In-Depth Analysis of Mayo v. Prometheus: What it Means for the Future of Medical Diagnostic Patents

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, May 3, 2012
Price: $197
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The Supreme Court unanimously held that claims directed to the relationship between the concentrations of blood metabolites and response to a therapeutic drug in two patents owned by Prometheus Laboratories, Inc. were unpatentable, stating that they “effectively claim the underlying laws of nature themselves.”  This is a reversal of the Federal Circuit’s decision, which held that the claims did indeed encompass patentable subject matter. The Court also vacated the Fed Circuit’s decision in the Myriad gene patents case, sending it back for reconsideration based on the guidance offered in the Mayo ruling.

This landmark decision directly affects how universities approach patent decision making for diagnostic method patents, and will almost certainly impact the Myriad case, as well as a whole range of method claims surrounding other technologies. Indeed, the USPTO has instructed examiners to “continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance” along with some additional considerations based on the Supreme Court’s ruling. (find the full text  memo here)

To help you make sense of the complex patentability issues raised by the decision, and to guide you in drafting future claims, we’ve created this critical program. Our expert attorney will dissect the Court’s decision and help you understand how to adjust your patent strategy in light of this development.

Technology Transfer Tactics is pleased to partner with Kevin E. Noonan, PhD, author of the PatentDocs blog ( and a partner with McDonnell Boehnen Hulbert & Berghoff LLP, for this analytical 60-minute distance learning program.


  • Review the Supreme Court decision’s implications on future Federal Circuit rulings, including Myriad
  • Provide guidance on the criteria required to establish subject matter patent eligibility
  • Unveil practical strategies for drafting claims in compliance with the ruling’s interpretation
  • Discuss what lessons can be learned from the decisions for future patentability challenges

Learning objectives

  • Understand the complex patentability issues raised by the decision
  • Provide guidance in drafting future claims.
  • Strategies for adjusting your patent strategy

Your Expert Presenter:

Kevin E. Noonan, PhD, is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and has extensive experience in biotechnology and the chemical arts. Dr. Noonan brings more than 10 years of experience as a molecular biologist working on high-technology problems to his legal work. He has wide experience in all aspects of patent prosecution, interferences, litigation, and client counseling on validity, infringement, and patenting strategy matters. Dr. Noonan represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing.

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