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

New York Law School; Columbia University - Department of Health Policy and Management; Center for Advanced Studies in Biomedical Innovation Law

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)

New York Law School ( email )

185 West Broadway
New York, NY 10013
United States
212.431.2355 (Phone)

HOME PAGE: http://www.nyls.edu/faculty/faculty-profiles/faculty_profiles/jacob-s-sherkow/

Columbia University - Department of Health Policy and Management ( email )

600 West 168th Street, 6th Floor
New York, NY 10032
United States

Center for Advanced Studies in Biomedical Innovation Law ( email )

Studiestraede 6
Studiestrade 6
Copenhagen, DK-1455
Denmark

HOME PAGE: http://jura.ku.dk/cebil/staff/

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