The Commissioner's decision in Amazon.com
(discussed above) gave rise to a new form of non-statutory subject
matter objection being raised against diagnostic method claims
under Section 2 of the Patent Act, which defines
"invention." In these new objections, patent examiners
apply a "contribution analysis" approach to determining
patent-eligible subject matter, wherein a claim is first dissected
into its individual steps, and each step is subsequently assessed
to determine where the inventive contribution lies over the prior
art. If the contribution is deemed by the Examiner to lie in a step
that is considered non-statutory subject matter, such as an alleged
mental process or mathematical assessment, then the entire claim is
rejected as non-statutory subject matter.
In practitioners' minds, this "contribution
analysis" approach seemed to contravene the well-established
practice of purposive claim construction, where a claim is to be
considered as a whole. The Federal Court's decision appeared to
confirm that the principles of purposive construction still apply.
Yet, despite the Federal Court's decision, "contribution
analysis" objections continued to be raised in diagnostic
method cases. Thus, the FCA decision was highly anticipated amongst
members of the profession.
The FCA decision confirms that the "contribution
analysis" approach should not be followed and that purposive
construction should be applied to all patent claims, as discussed
in the previous article. However, the FCA did not expressly rule
out the application of the principles from
Schlumberger,1 which was decided almost thirty
In Schlumberger, claims directed to a process where
measurements obtained in oil and gas boreholes were recorded,
transmitted to a computer programmed according to specific
mathematical formulae and converted into useful, human-readable
information were considered to be a "mere scientific principle
or abstract theorem", as the Court concluded that the only
novel aspect of the claimed invention was a mathematical formula.
As such, the claims were directed to non-patentable subject
In Amazon.com, the FCA refrained from construing the
claims as it did not have enough information to make such a
determination on the record. However, the FCA provided some general
guidance in this regard: Schlumberger may not be
distinguishable if, on a purposive construction, the only inventive
aspect of the claimed invention is the algorithm, but if the
algorithm is but one essential element in a novel combination, then
the claim consists of patentable subject matter.3 This
tension between the principles in Schlumberger and
Whirlpool could be due to their respective contexts:
Schlumberger dealt directly with patentable subject
matter, while Whirlpool dealt with construction for an
infringement and validity analysis. However, it is arguable that
the principles set by the SCC in Whirlpool should be used as the
definitive statement of patent construction, as it is both a
statement from a higher court and was more recently decided.
In any event, it is presently unclear how the Commissioner will
apply the FCA's decision to the claims at issue in the
Amazon.com case, and equally unclear how the decision will
be applied to diagnostic method claims in general. For the
meantime, the FCA's reasoning will at least provide further
ammunition for practitioners when arguing against
"contribution analysis" objections in diagnostic method
1 Schlumberger Canada Ltd. v Canada (Commissioner of
Patents),  1 FC 845 (FCA).
2 Ibid at para 5; Amazon.com-FCA, supra
at para 62.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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