Think Tanks Urge Supreme Court to Reject Abstract Process Patents

Washington, D.C., September 15, 2011 – The Competitive Enterprise Institute, Cato Institute, and Reason Foundation have submitted an amicus curiae brief to the United States Supreme Court, urging the Court to nullify patents covering abstract thoughts or mental processes.

Petitioners in the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. are challenging two patents on diagnostic processes that consist of observing correlations between blood test results and patient health. The public interest brief supports petitioners’ argument that naturally occurring phenomena and abstract processes should not be patentable. It also argues that the patents at issue unconstitutionally restrict freedom of thought because they grant exclusive use of the “mental step” of observing and recognizing correlations.

“Enforcing the patents here will have a deleterious economic effect on the healthcare and medical research industries and will retard innovation,” according to the brief, which was prepared by Christina Mulligan, a fellow at the Yale Law School’s Information Society Project. Worse, it violates the First Amendment “by putting parties at risk of incurring damages for patent infringement when they recognize the correlations described in the patents at issue.”

Among the petitioners is a Mayo Clinic physician whom the patent holder claims should be liable for infringement merely because she became aware of a medically significant correlation between the patent holder’s drug and the level of certain metabolites in the blood from treated patients. “Before Dr. el-Azhary read about the patented correlations, she could treat her patients and conduct her research with impunity,” said Ryan Radia, Associate Director of Technology Studies at CEI. “It is absurd that she could be liable merely because she knows about them now.”

The issue at stake in the Mayo case is whether patents should be allowed to monopolize basic observations of the way varying the dose of a medicine affects a patient’s response. Adjusting the dose of drug to get optimal results is a routine medical practice doctors use in treating their patients, say the Mayo Clinic petitioners. “Giving anyone the right to prevent doctors from observing those basic facts of nature would send medical practice back to the stone age,” said Radia, “It would stifle medical innovation and prevent doctors from giving the best possible care to their patients.”

The U.S. Supreme Court will hear oral arguments in the case on December 7, 2011.

>> Read the public interest amicus curiae brief here.