In This Presentation:

- What *Should* be Eligible for a Patent?

- And According to Congress

- What are the Exceptions to Eligibility?

- Mayo Collaborative Services v. Prometheus Laboratories, 566 U.S. __ (March 20, 2012)

- Sample Claim in Prometheus

- The “Law of Nature”

- The Decision

- The “Administering” Step

- The “Determining” Step

- The “Wherein” Clauses

- Myriad on Remand after Prometheus– What to Expect?

- Myriad “Isolated DNA”Claims

- Myriad Diagnostics Claims

- Myriad Screening Claims

- Where Does the Case Law Leave Us?

- Enforcing Patents and “Split Infringement”

- Akamai v. Limelight (continued)

- McKesson v. Epic Systems (Fed. Cir. 2011)

- Akamai and McKesson

- Akamai and McKesson – What Impact?

- Recommendations after Prometheus

- Hint #1: Include Significant “Post-Solution Activity”

- Hint #2: Include “Several Unconventional Steps”

- Hint #3: Avoid “improperly tying up the future use of laws of nature”

- Hint #4