And How: Mayo v. Prometheus and the Method of Invention

Yale Law Journal Online, Vol. 122, p. 351, 2013

Stanford Public Law Working Paper No. 2296033

8 Pages Posted: 21 Jul 2013 Last revised: 2 Aug 2013

See all articles by Jacob S. Sherkow

Jacob S. Sherkow

University of Illinois College of Law; Carle Illinois College of Medicine; University of Illinois at Urbana-Champaign - European Union Center; University of Illinois at Urbana-Champaign - Carl R. Woese Institute for Genomic Biology

Date Written: April 1, 2013

Abstract

The Mayo Court's novel test for patent eligibility — whether or not an invention involves “well-understood, routine, conventional activity, previously engaged in by researchers in the field” — focuses on how an invention is accomplished rather than what an invention is. That concern with the method of invention poses several normative, statutory, and administrative difficulties. Taken seriously, the “how” requirement will likely have broad effects across all levels of patent practice.

Keywords: patent, mayo, prometheus, invention, innovation, pto, intellectual property

JEL Classification: O33, O34, K11, K1, K3

Suggested Citation

Sherkow, Jacob S., And How: Mayo v. Prometheus and the Method of Invention (April 1, 2013). Yale Law Journal Online, Vol. 122, p. 351, 2013, Stanford Public Law Working Paper No. 2296033, Available at SSRN: https://ssrn.com/abstract=2296033

Jacob S. Sherkow (Contact Author)

University of Illinois College of Law ( email )

504 E. Pennsylvania Avenue
Champaign, IL 61820
United States

Carle Illinois College of Medicine ( email )

506 S Mathews Ave
Urbana, IL 61801
United States

University of Illinois at Urbana-Champaign - European Union Center ( email )

Coble Hall
801 S Wright St
Champaign, IL 61820

University of Illinois at Urbana-Champaign - Carl R. Woese Institute for Genomic Biology ( email )

Urbana, IL
United States

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