Patentable Subject Matter

Assessing whether subject-matter is statutory requires a determination as to
whether: the invention (1) falls within the statutory definition of “invention”
provided by the Patent Act;  (2) is not within a class of subject-matter that is
specifically excluded by the Patent Act; and (3) is not otherwise excluded by
operation of judicial interpretation of the Patent Act.

February 5, 2015

Federal Court Reverses Commissioner’s Opinion that Janssen Altered the Prohibition against Patenting of Methods of Medical Treatment

AbbVie Biotechnology Ltd v Canada (Attorney General), 2014 FC 1251 - The core of the Commissioner’s argument was that Janssen Inc v Mylan Pharmaceuticals ULC, 2010 FC 1123, broadened the prohibition against patents on methods of medical treatment to include generally claims which restrict the “how and when” a physician could administer a particular drug. The Court found that the Commissioner had misread Janssen.
December 12, 2014

UK Court holds email file transfer program is unpatentable subject matter

Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463 - The UK Court rejected a patent on a method of transferring files via email communication for unpatentable subject matter for being no more than a computer program.
November 7, 2014

Federal Court to Hear Challenge to the Patentability of Isolated Nucleic Acids

Children’s Hospital of Eastern Ontario v University of Utah Research Foundation, T-2249-14 - The CHEO will argue that the Long QT Patents that are inhibiting its ability to conduct medical testing claim unpatentable subject matter since the claimed nucleic acids are naturally occurring, encode for naturally occurring human genes, and were discovered by extracting genetic material from human beings. Validity of the method testing claims are also disputed.
October 28, 2014

Commissioner Upholds Rejection of Patent on Computerized Auction System

Commissioner’s Decision # 1355 - Canadian Patent Application No. 2,493,971 on a computerized auction system was rejected for lack of statutory subject matter for being merely an abstract set of rules.
October 20, 2014

Australian Federal Court Upholds Patentability of Isolated DNA Sequences, Parts Ways with Supreme Court of the United States

D’Arcy v Myriad Genetics Inc [2014] FCAFC 115 - The Federal Court of Australia Full Court upheld the validity of Australian Patent No. 686004, which claims an isolated sequence of DNA useful for cancer diagnosis, as qualifying as a “manner of manufacture” and thus patentable subject matter pursuant to section 6 of the Statute of Monopolies.
June 20, 2014

Reciting a Generic Computer or Conventional Computer Implementation Not Sufficient to Render an Otherwise Abstract Idea Patent Eligible

Alice Corp v CLS Bank, No 13–298, 573 US ____ (2014) - The US Supreme Court rejected patent claims that “relate to a computerized scheme for mitigating ‘settlement risk’" for being drawn to the abstract idea of intermediated settlement. Merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.
December 23, 2013

PAB Allows Application Despite Examiner’s Rejection Based upon Unpatentable Subject Matter

Re. Patent Application 2,333,184 CD 1345   Background   The patent application at issue is for an automated method of classifying or sorting plant embryos of […]
December 23, 2013

PAB Rejects Patent for Method of Medical Treatment

Re. Application 2,365,923 CD 1343 Background The Application is for a patent for the use of a drug to treat patients suffering from a rare genetic […]
October 29, 2013

Subject Matter, Obviousness, Double Patenting and Sound Prediction all Issues in Recent FC Case

Bayer Inc. v Cobalt Pharmaceuticals Company [2013 FC 1061] Background This proceeding is an application under the NOC regulations by Bayer seeking a prohibition order to […]
October 8, 2013

FC Invalidates Novartis Patent for Being Unpatentable Subject Matter (Affirmed on Appeal)

Novartis Pharmaceuticals Canada Inc. v Cobalt Pharmaceuticals Company [2013 FC 985] Affirmed on Appeal [2014 FCA 17] Background This is an application under the NOC regulations […]