And How: Mayo v. Prometheus and the Method of Invention


  • Jacob S. Sherkow
Publish Date:
April 1, 2013
Publication Title:
Yale Law Journal Online
Journal Article Volume 122 Pages 351
  • Jacob S. Sherkow, And How: Mayo v. Prometheus and the Method of Invention, 122 Yale Law Journal Online 351 (2013).
Related Organization(s):


The Mayo Court’s novel test for patent eligibility—whether or not an invention involves “well-understood, routine, conventional activity, previously engaged in by researchers in the field”—focuses on how an invention is accomplished rather than what an invention is. That concern with the method of invention poses several normative, statutory, and administrative difficulties. Taken seriously, the “how” requirement will likely have broad effects across all levels of patent practice.