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machine-or-transformation test is not the sole test for determining the patent eligibility of proces

Raj Kumar Makkad ,
  28 December 2010       Share Bookmark

Court :
United states Federal Circuit
Brief :
Test for determining the patent eligibility of process claims- This case returns to the present court on remand from the Supreme Court for further consideration in light of the Court's decision in Bilski v. Kappos - In the instant case District court's granted summary judgment of invalidity of Plaintiff's patents related to claim methods for determining the optimal dosage of thiopurine drugs to treat gastrointestinal and non-gastrointestinalautoimmune diseases was reversed and remanded where, 1) Plaintiff's asserted method claims recite a patent-eligible application of naturally occurring correlations between metabolite levels and efficacy or toxicity, and thus do not wholly preempt all uses of the recited correlations; and 2) Treatment methods claimed in plaintiff's patents satisfy the transformation prong of the machine-or-transformation test, as they "transform an article into a different state of thing," and this transformation is central to the purpose of the claimed process.
Citation :
Prometheus Laboratories, Inc. Vs. Mayo Collaborative Services (Decided on 17.12.2010)

Held, that the District court erred as a matter of law in finding Prometheus's asserted medical treatment claims to be drawn to no nstatutory subject matter under this court's machine-or-transformation test, which was held in In re Bilski.

To be the definitive test for determining the patentability of a process under § 101.The Supreme Court held that the machine-or-transformation test, although "a useful and important clue," was not the sole test for determining the patent eligibility of process claims. The judgment of the district court was reversed and remanded to the court with instructions to deny Mayo's motion for summary judgment that the asserted claims are invalid under § 101.


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