Haunted by the Spirit of the Invention: Recent Examination Guidelines from the Canadian Intellectual Property Office for Medical Diagnostics Channel the Spectre of Contribution Analysis

Canadian Intellectual Property Review, Vol. 32, No. 1, 2016

50 Pages Posted: 15 Jul 2016 Last revised: 8 Oct 2016

Date Written: January 18, 2016

Abstract

Recent guidelines issued by the Canadian Intellectual Property Office for the examination of medical diagnostic claims are contrary to jurisprudence. The guidelines instruct examiners to actively vary the literal wording of the claims under the aegis of a supposedly “purposive” approach that is itself at variance with the tenets of purposive construction. The guidelines indicate that examiners should identify an underlying technical problem and cast aside as purportedly “non-essential” any claim features deemed superfluous to its solution, or part of the common general knowledge. The “essential” features, thus distilled, are assessed for subject matter eligibility. The result is that diagnostic claims are now routinely objected to for being mere correlations, and are absurdly said to have no practical application. The approach is contrary to the Free World Trust, Whirlpool, and Shell Oil decisions of the Supreme Court of Canada, and to industry realities. The outcome is identical to contribution analysis.

Keywords: intellectual property, patents, Canada, subject matter, claims construction, diagnostic, personalized medicine

JEL Classification: O34

Suggested Citation

Boocock, Graeme, Haunted by the Spirit of the Invention: Recent Examination Guidelines from the Canadian Intellectual Property Office for Medical Diagnostics Channel the Spectre of Contribution Analysis (January 18, 2016). Canadian Intellectual Property Review, Vol. 32, No. 1, 2016 . Available at SSRN: https://ssrn.com/abstract=2809891

Graeme Boocock (Contact Author)

Borden Ladner Gervais LLP ( email )

100 Queen Street
Suite 1300
Ottawa, Ontario K1P 1J9
Canada
+1-613-369-4775 (Phone)
+1-613-787-3558 (Fax)

HOME PAGE: http://www.blg.com

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