The Supreme Court needed only a few months to determine Prometheus Laboratories Inc.’s process claims weren’t patent eligible, but it could take the biopharma industry years to figure out how to live within the new line the court has drawn for process patents, especially those covering diagnostics that advance personalized medicine.
In tossing out Prometheus’ process patents for calibrating the proper dosage of thiopurine drugs used to treat autoimmune diseases, the high court set a higher patent bar for the life sciences Tuesday, while leaving the field with a good deal of uncertainty, Paul Rivard, a Banner & Witcoff shareholder, told BioWorld Today.
Courtenay Brinckerhoff, a partner at Foley Lardner, agreed, saying the uncertainty could last for years as industry is forced to guess at what the new bar is because the opinion, in disrupting the status quo, provided little in the way of concrete guidance.
“Where do we draw the line now that Prometheus is on the other side?” is the question biopharma is left to figure out as it moves forward with new process claims, she said.
The answer to that question, and others left unanswered in Mayo Collaborative Services Inc. v. Prometheus Laboratories Inc., is likely to be provided only as more patent challenges work their way through the court system over the next several years, the two patent attorneys said.