(A-2017-01612) - Page: 543

Talking points on recent Siebrasse blog posting • Though the practice framework used in the examination of patent applications may appear

static from the outside, it is constantly being analysed in view of any new information that

becomes available. This new information can be in the form of:

o New decisions by the courts

o Blog postings on aspects of the patent system

o Direct communications to the Patent Office from people interested in the patent system

o Public consultations

o Reasoning used by applicants or agents in the prosecution of patent applications

o Information from the Emerging Technologies group in the Patent Branch

• The new information is assessed for pertinence and, particularly when addressed to any existing

practice framework, whether there is any point that has not been previously considered.

• The practice framework is changed (in minor or major terms) if the analysis of the new

information in conjunction with the pre-existing information and the constraints on the

framework indicates that a change is necessary.

• The recent Siebrasse blog post (http://www.sufficientdescription.com/2018/01/diagnostic-

methods-at-cipo.html), while coming to a different interpretation from that of the office, is an

example of one of the better sources of information: the post is well-reasoned with a firm basis

in law delivered in a professional tone and manner. Many of the points are insightful providing

a different viewpoint on the practice framework which greatly helps in the ongoing analysis.

• There are two major and one minor inconsistency in the article that hinder its persuasiveness:

o The post implies that in construing a claim the office attempts to determine the

advancement made by the invention (what is slightly inaccurately called the inventive

concept) and uses that to determine whether a claim is statutory. This is a

mischaracterization as an important step in the framework is omitted: the advancement

is mapped back on the claim to determine which elements of the claim are essential to

the advancement and it is from those elements that the statutory nature of the claims

are analysed. This point can appear subtle especially in diagnostic methods where, at

times, the advancement only maps back to a correlation made in the mind.

o The blog also asserts that, in effect, certain aspects of purposive construction should not

be used in situations when statutory subject-matter is analysed. However, the leading

court cases state that purposive construction is fundamental and necessary to all

aspects of examination including statutory subject-matter. The assertion also does not

account for court decisions where the statutory nature of a claim turned on a subset of

the claim elements. Much of the basis of the current practice framework is derived

from that point of those court cases.

o As a minor point, a number (but not all) of the court decisions that are relied upon in the

post are from foreign jurisdictions and as such have essentially no weight in an analysis

of Canadian patent law or a practice framework.

• In conclusion, while the post does give points to consider, the inconsistencies coupled with the

need for a consistent cross-disciplinary framework argue against making any changes to it.

(A-2017-01612) - Page: 544

• To address Shell Oil: The distinction really lies in the Office's determination that a diagnostic

method is an aggregation of 2 independent components — data acquisition and data analysis:

how data is analysed has no material effect on how the data needs to be physically acquired. In

such a situation, there is not a new use of an old product (like Shell Oil) but rather a new use of

information (i.e. the use of the correlation to make a diagnosis). This does not give rise to a

"practical embodiment of the new knowledge" necessary to be an invention because the

information is disembodied.