A Test is a Patent is a Patent is a Test, or Is It? Supreme Court Considers Case of Mayo V. Prometheus

12/13/11

Prometheus Laboratories owns the patent under fire. It deals with the correlation between thiopurines; these are drugs used in the treatment of gastrointestinal disorders, and metabolites in patients' blood, per the article. The patent covers a method which says it assists doctors with finding an appropriate dosage for patients; one that works while at the same time does not cause harm. Hmmm…isn't that what all ‘appropriate dosages' do?

That being said, when the Mayo Clinic developed its own test using correlations that differed in only minor ways, Prometheus sued for patent infringement. Mayo argued what Prometheus was trying to protect was merely an “abstract idea based on natural phenomena that was not eligible to be patented”, per the December 7^th nytimes.com article, “Supreme Court Hears Case on Patents for Individualized Medicine”.

In its brief, Prometheus held that the tremendous advances in medicine as of late will most likely see an increase in ““uniquely targeted treatments” based on an individual's genetic makeup,” per the December 7th washingtonpost.com article, “Supreme Court has hard time finding an easy test for patents on medical processes”.

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Commentary from the justices, per the December 7^th washingtonpost.com article, serves to illustrate that the age old question of, “How many angels can dance on the head of a pin?” might well have been used in place of, and no one would have noticed:

Justice Stephen G. Breyer pondered being able to patent the discovery that too small an amount of fertilizer in a field would do nothing, but too great an amount would destroy the crops.

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Chief Justice John G. Roberts Jr. made the scintillating observation that: “You take wood, you put it on a grate, you light it, and you get heat.” He observed further that this “recites a series of acts performed in the physical world that transforms the subject of the process, the wood, to achieve a useful result, which is heat. So I can get a patent for that?”

Prometheus' attorney Richard P. Bress said, in defense of the patent, that prior to the development of the test, “doctors had no way to tailor for each individual, based on their metabolism, the right dosage of these powerful but potentially toxic drugs,” per the washingtonpost.com article.

Mayo attorney Stephen M. Shapiro put forth to the justices that permitting Prometheus to patent its method would cause harm to research processes that are , a “fundamental to American health and to the economy and the health care industry.”

So did Prometheus actually invent anything? That remains to be seen. But, Justice Elena Kagan seemed to have offered a logical summary; she was quoted as saying in the washingtonpost.com article: “This is not a treatment protocol, it's not a treatment regimen. All you have done is pointed out a set of facts that exist in the world . . . and are claiming protection for something that anybody can try to make use of in any way, and you are saying, ‘You have to pay us.' ”

Perhaps it would be less painful, expensive, and time consuming for all parties involved, to, as Prometheus – ironically or not – is said to have endured by way of Zeus, have one's liver perpetually eaten by an eagle.