Washington D.C. partner and co-chair of the IP Group, Bob Stoll, authored an IPWatchdog article titled “What Happens to Diagnostic Method Patents After Athena?” Bob discusses the impact that Alice Corporation v. CLS Bank has had on patent eligibility, and recent developments from Athena Diagnostics v. Mayo Collaborative Services. Even though the Supreme Court said their Alice holding was to be narrowly construed, the Alice two-step test to determine patent eligibility has thwarted domestic industries that are seeking patents in cutting-edge technologies. Additionally, the application of the test is causing disastrous effects to some of our health-related industries.
Bob also examines other troubling aspects of the Alice test, including lower-court decisions depriving our technologies of diagnostic methods and personalized medicines by overusing the Alice test to the point where research funding is decreasing and other countries are granting more patents in these areas. He also considers the recent split decision in Athena, which found that diagnostic methods are not patent subject matter eligible unless they have a separate technical improvement beyond the correlation of certain antibodies in bodily fluids to specific diseases.
Ultimately, Bob believes a resolution could be achieved if judges used tools in their expansive arsenals to differentiate Alice or render a strong, unified decision to provide a good case to take back up to the Supreme Court.