Novartis AG v. Union of India & Others (Supreme Court of India, 1 April 2013)

On 1 April 2013, the Supreme Court of India confirmed the rejection by the Indian Patent Office of a patent application filed by Swiss drug maker Novartis on the anti-cancer medicament “Glivec”. The Supreme Court considered that Glivec did not qualify as a patentable “invention” under Section 3 (d) of the Indian Patents Act.

EISAI/Second medical indication G 05/83 [1979-85] EPOR B241 (1985) (European Patent Office, Enlarged Board of Appeal)

The Enlarged Board of Appeal decided on the 5th December 1984 on the question of novelty and second medical indications. It held that a patent must not be granted for claims directed to the use of a substance or composition for the treatment of the human or animal body by therapy. However, a patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application (“Swiss claim”).

Diamond v. Diehr, 450 U.S. 175 (1981)

The U.S. Supreme Court upheld a decision by the Court of Customs and Patent Appeals to grant a patent on a process using an abstract formula. It therewith held that an invention in the form of a process including an as such not patentable element is patent-eligible if it meets the requirements of patentability as a whole.

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

On 17 March 1980, the United States Supreme Court confirmed the decision of the Court of Customs and Patent Appeals to grant a patent for a bacterium capable of breaking down crude oil (Pseudomonas putida). The Supreme Court therewith established that whether or not an invention is a living thing is irrelevant to the question of its patentability.

Bilski et al. v. Kappos, Under Secretary of Commerce for Intellectual property and Director, Patent and Trademark office 130 S.Ct. 3218 (28 June 2010)

The U.S. Supreme Court affirmed on 28 June 2010 the rejection by the Federal Circuit of a patent application concerning a claimed invention which explains a hedging and investment strategy in an energy market. It held that the abstract strategy was not patentable subject matter.

iNO Therapeutics LLC v. Praxair Distribution Inc. (United States Court of Appeals for the Federal Circuit, 2019)

In this decision, the Court of Appeals for the Federal Circuit ruled on the patent eligibility of a claim concerning a natural phenomenon. To evaluate the patentability, the Court utilized the criteria developed in previous case law to determine a) whether the claim is directed to a natural process/phenomenon; b) if so, whether the claim contains an eligible subject matter that can transform the claim itself into a patent eligible one.