Troy Groetken Image

Troy Groetken

is a Shareholder, Board Member, and Executive Committee member with McAndrews Held & Malloy. He has approximately 25 years of legal experience in the intellectual property field and more than 25 years of technical experience in the pharmaceutical, biotechnological, and chemical fields. He is recognized in the IAM Patent 1000: The World’s Leading Patent Professionals, and has been listed as one of the Best Lawyers in America since 2012.

Recent Articles by Troy Groetken

Rethinking the Way We Patent Diagnostics

The 2012 Supreme Court decision in Mayo Collaborative Servs. v. Prometheus Labs changed the landscape for patenting diagnostic inventions in the United States. Patent eligibility/ineligibility in the United States stems from two sources: (1) 35 U.S.C. § 101, and (2) judicially-created exclusions, including laws of nature, natural phenomena, abstract ideas, and mental processes. In Mayo, the Supreme Court struck down method of treatment claims for being directed to a law of nature. While Mayo did not create this exclusion, it significantly expanded its applicability to diagnostic-based inventions. This paper explores Federal Circuit case law on patent eligibility of diagnostic-based inventions since the Mayo decision, as well as provides practical guidance on drafting diagnostic patent claims in light of these decisions.