Moderating Mayo

Chao, Bernard | December 1, 2012

The Supreme Court’s latest pronouncements on patentable subject matter in Mayo v. Prometheus have already created a firestorm of controversy. The Court found that various limitations did not add enough to the law of nature that lies at the heart of Prometheus’ medical diagnostic patents to render the claims patent eligible. Because the Supreme Court never explained what “enough” is, critics have been quick to deride Mayo and warn that it would radically limit patent eligibility in a wide-ranging number of industries. Although I agree with the ultimate result reached by the Supreme Court, I am also concerned that its reasoning unnecessarily jeopardizes too many deserving patents. But the decision does not have to create the havoc that so many fear. There is room for a more restrained understanding of Mayo. This Essay offers a moderate interpretation of Mayo by building on recent efforts to revive the out-of-favor “point-of- novelty” analysis. For years, patent law has refused to consider an invention’s point of novelty in its decisionmaking. In other words, the law does not attribute any special significance to a subset of claim limitations regardless of how important those limitations are to the invention; patent law treats all the limitations as equally important. However, it makes no sense for patent law to take such a formalistic approach and ignore the fundamental idea underlying a patent’s invention. Fortunately, the Mayo decision implicitly adopts some point-ofnovelty thinking. This Essay builds on these ideas to develop a fuller pointof-novelty framework that explains when a claim has added enough to an unpatentable concept to make it patent eligible. By applying this approach to both Prometheus’ claims and a hypothetical claim that Prometheus could have drafted, this Essay explains how Mayo can be interpreted as only a modest rejection of a particular type of abstract claim.