Mayo Collaborative Services v. Prometheus Laboratories, Inc. 사건판결에서 나타난 미국 연방 대법원의 판결 경향

This paper analyzes the recent United States Supreme Court’s decision, Mayo Collaboraive Service v. Prometheus Laboratories, Inc. This decision reversed the United States Court of Appeals for the Federal Circuit’s holding that the claims were patentable because they satisfied the machine-or-transformation test. In Mayo, the United States Supreme Court held that Prometheus’ process was not patent-eligible. Since Prometheus’ claims recited the laws of nature―the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage would prove ineffective or cause harm―the claimed processes were not patentable. To be patent-eligible, there should be additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations. The three additional steps in the claimed processes were not themselves natural laws but neither were they sufficient to transform the nature of the claims. However, how much of application is necessary to satisfy the patent requirement is still questionable. After Mayo, the Court remanded two cases ―Association of Molecular v. Myriad, and Ultramercial v. Hulu.― to the United States Court of Appeals for the Federal Circuit. This suggests that the Supreme Court intends Mayo to have a wide-ranging impact in biotech and software cases. In light of Mayo, it is unlikely that the Court will hold Myriad and Ultramercial’s claims are patent-eligible based on the Court’s precedents.