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

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.