Since the United States Supreme Court’s 2010 decision in Mayo vs. Prometheus, the United States has arrived at a regime where scientific discoveries are patentable only to the extent that a claim represents an ‘inventive application’ of the underlying principle. Under this regime, not only have medical diagnostics become nearly unpatentable, but the doctrine of patent eligibility has begun to supplant the requirements of disclosure and non-obviousness as well. This work shows that the Mayo regime relies on a particular set of premises, both stated and unstated: an ontological premise about ‘laws of nature’; a historical premise about the treatment of discoveries in 19th-century Anglo-American patent law; a jurisprudential premise about legislative intent in the U.S. patent statutes; a doctrinal premise about the relationship of patent-eligibility to other patentability doctrines; and an economic premise about the basic research and the effect of patents on fundamental principles on innovation. I examine these premises, particularly the historical and economic ones, and show that most, if not all, are unfounded. These findings have significant implications for current legislative efforts in the United States to reform the doctrine of patent eligibility.
Ansprechpartnerin: Marina Chugunova