Bilski and biotech

Kenneth R. Adamo, Michael S. Weinstein and John V. Biernacki of Jones Day examine the application of In re Bilski in the biotechnology field

On 16 September 2009, the United States Court of Appeals for the Federal Circuit (Federal Circuit) issued its decision in Prometheus Laboratories, Inc. v Mayo Collaborative Services, which addressed the question of whether certain medical diagnostic claims recite patent-eligible subject matter under 35 U.S.C. § 101 and the framework the Federal Circuit established in In re Bilski.¹ At issue were claims directed to methods for calibrating the proper dosage of drugs. The court held that the claimed methods recited eligible subject matter under Section 101, because the methods satisfied the “machine-or-transformation test.”