By James Ramsbottom
On June 29, 2015, CIPO released their latest guidance to patent examiners on the examination of claims for patents defining medical diagnostic methods. The link can be found at http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03945.html.
Using a problem-solution approach and purposive claim construction, CIPO is guiding examiner’s to determine the medical diagnostic problem the inventor proposes to solve based on the examiner’s understanding of the Common General Knowledge in the art, not by reference to the closest prior art of the examiner’s search. This seemingly follows the 2008 SCC Sanofi decision.
The defined method of medial diagnosis of the application is to be categorized into either one of a “data acquisition problem” or a “data analysis problem“. CIPO has guided that “[W]here a physical step of data acquisition is identified as an essential element of the construed claims, the claimed subject matter will likely be statutory” yet it appears that “data analysis problem” methods devoid of an explicit physical step manipulation will be rejected under Section 2 of the Patent Act as non-statutory subject matter following the 2010 FC Amazon decision.