But in oral arguments on Dec. 7, no one brought up the AMA's concerns about access to scientific knowledge nor the ACLU's concerns about freedom of thought. Indeed, Justice Kagan wondered aloud why Prometheus didn't file a patent that said, "at a certain number you should use a certain treatment, at another number you should use another treatment." Such a patent, she declared, "clearly would have been patentable. Everybody agrees with that."
(In fact, a number of public interest organizations have told the court they do not agree with that.)
The possibility of the Supreme Court allowing patents on medical decision-making should alarm even those who have little contact with the health care industry. Numerous industries that have traditionally been spared the costs of patent litigation could suddenly be forced to lawyer up. An accountant could patent the idea that a particular pattern of financial transactions "indicates a need" for a more thorough audit. A chef could patent the idea that a particular temperature "indicates a need" to take a dish out of the oven.
These ideas may sound absurd, but patents on medical decision-making would have sounded equally absurd 15 years ago. Yet the Federal Circuit's reasoning in Mayo suggest that people could get such patents with a bit of clever lawyering, just as they did with the Prometheus patent.
By allowing the 1998 ruling on financial software to stand for more than a decade, the Supreme Court has created a dangerous confusion over what sorts of ideas are eligible for patent protection. Attorneys have taken full advantage, pushing patent law into new industries. Investment strategies were first; now medicine; eventually maybe accounting or even baking. The longer the Supreme Court lets the uncertainty linger, the more disruptive it will be to change course.
This might not be so disturbing if the patent system were serving these newly patent-eligible industries well. Unfortunately, the most thorough empirical research suggests that the cost of litigation in software and finance dwarfs the rewards the patent system provides to innovators in those industries. The patent system seems to be actually discouraging innovation in these industries.
Yet the justices of the Supreme Court did not seem to grasp the urgency of the case. The oral arguments focused more on which kinds of medical diagnostic patents should be eligible for protection than on whether such patents should be allowed in the first place. So even if the Prometheus patent is rejected, it's likely to be a narrow ruling that allows the trend toward patents in more and more industries to continue.