• Court Finds Claims Do Not Cover Method of Medical Treatment, Orders that they Issue
  • March 6, 2015 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Abbvie Biotechnology Ltd. v. Canada (AG), 2014 FC 1251

    In this decision, Abbvie brought a judicial review of a decision of the Commissioner of Patents refusing to issue its patent. The issue was whether the claims were directed to a method of medical treatment. The Court disagreed, held that the claims were patentable, and directed that they be allowed.

    The Court considered the standard of review and held that it is correctness. The issue is a pure question of law relating to the statutory limits of patentable subject matter. There are no facts in dispute. The only issue is the Commissioner’s interpretation of statutory subject matter and, more specifically, the scope of the prohibition on methods of medical treatment.

    The Court held that the skill and judgment of the physician is exercised when a decision is made as to whether or not to use the claimed invention in the treatment of a patient. Furthermore, “just because the claims involve a fixed dosage and schedule does not mean that they are automatically patentable,
    nor does it mean that they constitute unpatentable subject matter.” (para. 113) The jurisprudence is consistent that when the claim is directed to the exercise of professional skill or judgment, it is not patentable. In this case, the claim was to a vendible product. The skill and judgment relates to whether or not to prescribe that product. Thus, the claim was patentable.

    The Court then held that the Commissioner had already found the claims to be not anticipated and not obvious. Only the issue of patentable subject matter was to be resolved. Thus, the Court held there is nothing more to re-examine and the claims should issue.