Saturday, January 27, 2018

No new cases

No new substantive patent cases were released last week.

Note that I generally only blog on substantive patent / pharma cases. If you want to keep abreast of all new Canadian decisions, including procedural decisions and copyright and trade-mark cases, I recommend subscribing to the Daily Intellectual Property News service from Alan Macek's IPPractice.

Thursday, January 18, 2018

Promise Doctrine Zombie Watch: Update, LLC v Wulftec International Inc 2018 FC 41 Annis J

The promise doctrine was abolished by the SCC in AstraZeneca 2017 SCC 36 (see here). Early indications were that it will not rise from the dead. This decision of Annis J confirms that the promise doctrine is so thoroughly dead that it cannot even survive a motion to strike.

The defendant Wulftec sought to amend its statement of claim to add an allegation that the asserted patents are devoid of utility [2]. While it is a bit difficult to understand exactly what was being alleged by the proposed amendments [5], the plaintiff Lantech argued, inter alia, that the allegations were based on an alleged promise of utility in the patent description [6]. Annis J agreed with this submission [7], and concluded that the proposed utility amendments did not meet the requirement of disclosing a reasonable cause of action [8].

Monday, January 8, 2018

Diagnostic Methods at CIPO

Something strange is going on at CIPO in respect of diagnostic method patents. As discussed in Richard Owens’ op-ed in the National Post and Kathleen Marsman’s article of 2 November in the Lawyer’s Daily, CIPO is systematically refusing to grant patents for some diagnostic methods. The holiday break gave me a chance to look into the issue in a bit more detail (and to read the fascinating IP Fly on the Wall materials that shed light on how those policies were developed), and to write a longer post than usual on the issue.

What is CIPO doing with patent applications related to diagnostic methods?
CIPO is systematically denying certain patents related to diagnostic methods, including, for example, patents related to personalized medicine technologies which tailor medical treatment to an individual patient. So, different kinds of cancer that superficially seem the same, may actually be very different metabolically, and consequently respond differently to different treatments. Before personalized medicine, all a doctor could do would be to try one treatment after another on their patient, and hope that something worked before it was too late. Personalized medicine allows the doctor to tailor the treatment to the disease, and the particular patient. For example, certain breast cancers produce large quantities of a compound known as HER2/neu, and the drug trastuzumab is effective in treating those types of cancer, but not others. Personalized medicine might involve testing the blood of a breast cancer patient and prescribing trastuzumab, if, and only if, elevated levels of HER2/neu were detected. Diagnostic methods generally rely on establishing a relationship or correlation between what CIPO calls the “analyte” (eg HER2/neu), and the existence of a particular disorder, or response to a certain drug (eg trastuzumab).

That CIPO is systematically denying certain patents related to diagnostic methods may not be well known to the public, but the fact itself is not disputed or secret. On the contrary, it is set out explicitly in the Practice Notice Respecting Medical Diagnostic Methods - PN 2015-02, and in the November 2017 update to CIPO’s Manual of Patent Office Practice (MOPOP), Section 17.03.04 [now 23.033.04a] that subsumed and elaborated this examining practice.