PATENT-ELIGIBILITY AFTER BILSKI: REVISITING THE SUPREME COURT’S PROMETHEUS DECISION

The Supreme Court decided Mayo v. Prometheus on March 20, 2102, addressing the patent-eligibility of the claimed processes under 35 U.S.C. § 101. This Article otherwise provides an alternative perspective of the justification other than the Prometheus Court’s reasoning but likewise conclude the unpatentability of the method claims is dispute.In addition to the Court’s comparison of certain controlling precedents with Prometheus’s claimed processes, this Article analyzes some other prior case law and argues that the structure of the claimed processes here is nearly identical to the claims in Labcorp and Grams. In spite of the concurring opinion this Article shares with the Court’s analysis in transformation prong of the machine-or-transformation test, this Article attempts to point out one of the questions left open in Bilski and remained unanswered post- Prometheus, namely the priority in applying the machine-or-transformation test and other rules in determining patent-eligibility under § 101. Finally, to further reinforce the reasons to negate the patent-eligibility of the claimed processes, this Article reads the Bilski decision more closely and proposes a rule to determine the patent-eligibility under § 101, in light of Bilski, that the machine-or-transformation test merely viewed as a “clue” must be governed by the preemption analysis to determine Prometheus’s claimed process methods.