The Canadian Federal Court of Appeal has recently indicated its
interest in revisiting patentability of methods of medical
treatment in future in a case where the issue is squarely
raised. The issue has again arisen due to controversy in case
law about when dosage forms and dosage regimens are eligible
subject matter for patenting. In some cases, courts have considered
them to be unpatentable methods of medical treatment. In the
clearest case for patentability, a specific new dosage form, such
as a tablet having specific mg dose can be patented if the dose is
new and inventive. However, if the patent claims arguably go more
toward a broad dosage range, or how a drug is to be used (eg.
different time points of administration), then this may arguably be
considered an unpatentable method of medical treatment. Certain
Federal Court cases have held patent claims that could prevent
physicians from exercising their skill and judgment in using a drug
are not patentable subject matter because they cover methods of
This Appeal Court flagged the method of medical treatment issue
in its May 4, 2015 decision in Cobalt Pharmaceuticals Company v. Bayer Inc.
(2015 FCA 116). The Court stated, "The current law in
this Court is that methods of medical treatment are not
patentable... The provenance of this is Tennessee Eastman Co. et
al. v. Commissioner of Patents,  S.C.R. 111, 33 D.L.R. (3d)
459, a decision based on former subsection 41(1) of the Patent Act,
now repealed. In his blog, "Sufficient Description,"
Professor Norman Siebrasse has forcefully advanced arguments of
policy and logic against the current position. In my view, this
calls for full consideration by this Court or the Supreme Court in
a case where the issue is squarely raised on the facts."
Separate from this case, the Canadian Intellectual Property
Office has recently given patent applicants some revised guidance
via its March 2015 practice notice for examination of medical use patent
claims. The notice takes a less strict approach to the
patentability of medical use claims relating to a dosage regimen as
discussed in our firm's
article by Patricia Folkins. CIPO had previously taken the
position in an earlier notice that unpatentable subject matter
generally included claims relying on essential elements that were
dosing schedules of any type, that specified where the treatment
was to be used or that were for a specific patient population.
Since Courts, CIPO and patent applicants are having difficulty
finding common ground on what is patentable in this area of
practice, we agree with the Federal Court of Appeal that detailed
guidance is needed from an appeal court in the near
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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