Canadian Lawyer

October 2020

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Page 56 of 59 55 Similarly, in medical diagnostic cases, while detecting a new molecule that is implicated in a disease or developing a new detection system for a molecule implicated in a disease, CIPO would likely consider that patentable, says Jennifer Marles, a partner at Oyen Wiggs Green & Mutala LLP in Vancouver. However, under the problem-solution assessment, "what might not be in the patentable bucket" is a way of assessing existing genetic markers, often used in personalized medicine, to better determine how to treat somebody for a particular disease or a type of disease such as cancer. The view of those in the field argues that "you have to look at the whole transaction as one thing," she says. "It's about getting the data from a specific person, looking at that data and figuring out what treatment will work best," not simply abstract thinking that is not patentable. W r o n g f u l D i s m i s s a l • E m p l o y m E n t l a W • H u m a n r i g H t s p o s t E m p l o y m E n t C o m p E t i t i o n • C i v i l l i t i g a t i o n • a p p E l l a t E a D v o C a C y • D i s a b i l i t y 82 Scollard Street, Toronto, Canada, M5R 1G2 | Contact Stacey Ball at (416) 921-7997 ext. 225 or ball profEssional Corporation Excellence in Employment & Labour Law • Counsel in Leading Cases | Author of Leading Treatise • Referrals on behalf of employees and employers respected Both Marles and Horbal say that more clarity on the use of the purposive construc- tion or problem-solution methods is important from a policy point of view. If, for example, the federal government wants to encourage more innovation, then allowing more patents to be granted helps that policy, as it allows inventors to better monetize their product or methods, especially in two areas, computers and medical diagnostics, where the problem-solution approach of CIPO has stymied the ability to get a patent. Having a patent allows inventors to find investors to get the idea off the ground, Marles says, encouraging the development of innova- tion into something tangible. Horbal says it can also encourage innovation by encouraging inventors to "come up with a new and better way to solve a problem, if there is already a similar patent out there." And both say that the clarification that the Choueifaty decision provides, if followed, gets CIPO out of the realm of creating policy through its problem-solution approach to patentable subject matter, rather than it being federal law interpreted and backed by case law. NOTABLE DECISIONS ON PROBLEM-SOLUTION AND PURPOSIVE CONSTRUCTION Canada (Attorney General) v. Amazon. com, Inc. 2011 FCA 328 Genencor International Inc. v. Canada (Commissioner of Patents) 2008 FC 608 Free World Trust v. Électro Santé Inc. 2000 SCC 66 Whirlpool Corp. v. Camco Inc. 2000 SCC 67 "It's about getting the data . . . looking at that data and figuring out what treatment will work best, not simply abstract thinking that is not patentable." Jennifer Marles, Oyen Wiggs

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