Further to our post last week, the recent practice notice released by the Canadian Intellectual Property Office (“CIPO”) amends CIPO’s approach to patentable subject matter.
The practice notice states that the references in the Manual of Patent Office Practice (“MOPOP”) to the “contribution” of a claim, to a “technological solution to a technological problem”, and to evaluating essentiality of elements based on a “problem and solution” during purposive construction in Chapters 12, 17, 18, 22 and 23 no longer apply.
The removal of the “problem and solution” language from the MOPOP is a welcome step in the right direction as courts have repeatedly found that CIPO mischaracterizes claim construction when following their “problem-solution” approach.
CIPO has also updated their guidance with respect to computer-implemented inventions, medical diagnostic methods and medical uses and games.
With respect to games, CIPO’s prohibition against methods of playing games as being unpatentable subject matter has been lifted.
With respect to medical diagnostic methods, CIPO has set out guidelines with respect to what sort of diagnostic methods CIPO will consider patentable:
“[I]f the subject-matter of a diagnostic method claim as construed defines elements that include physical steps, e.g., for measuring, identifying, detecting, assaying, etc. the presence or quantity of an analyte(s) in a sample, then the claim would be considered patentable subject-matter.”
With respect to “medical uses”, CIPO states that the key consideration is “whether professional skill and judgment would be required in using the invention”. Where no skill and judgment is required, the medical use may be patentable. CIPO notes that fixed dose regimens are an indication that no skill or judgment is required and therefore such claims may be patentable.
We note that the Supreme Court of Canada is currently considering the issue of the patentability of methods of medical treatment, and changes to this area of law may occur as a result of the Supreme Court’s decision.
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