Prometheus and the Natural Phenomenon Doctrine: Let’s Not Lose Sight of the Forest for the Trees

Abstract

The Supreme Court’s recent decision on patentable subject matter, Mayo Collaborative Services. v. Prometheus Laboratories, has come in for a lot of criticism from the biotechnology industry. Whenever the Supreme Court renders a judgment that is a significant departure from the past and arguably gets it wrong, the voices questioning the underlying principle behind the decision become stronger. Unfortunately, Prometheus was a poor vehicle for recalibrating a doctrine that has been untouched for the past three decades. However, it is important to dissociate the specific opinion from the principle animating the opinion, the natural phenomenon doctrine. If the natural phenomenon doctrine is to be rejected, it should be based on its merits rather than on the occasional mistakes of courts applying it. This Article analyzes the natural phenomenon doctrine and addresses some of the issues raised against it. It observes that the flexibility of this common law doctrine has been used by the Supreme Court to conform the scope of patentability to the demands of the time. The doctrine plays a vital role in ensuring that patents do not block off fundamental tools of future innovation. Furthermore, contrary to what some commentators argue, this role cannot be substituted by other statutory requirements. In fact, in comparison to the popular perception of patentable subject matter as being a gatekeeper of patentability, this Article shows that the main value of the natural phenomenon doctrine is in being the last defense against patenting natural phenomena when other statutory requirements fail.

Keywords: Mayo, Prometheus, patent, natural phenomenon, natural phenomena, natural process, gene, patentable subject matter, 101, personalized medicine, diagnostic