Another Positive Outcome For Diagnostic Methods From The Patent Appeal Board

The recent Patent Appeal Board (PAB) decision in Re Antibodyshop A/S (2021 CACP 35), further indicates the PAB's willingness to find valid diagnostic method claims. In this decision, the PAB provides insight as to how to interpret the term "determining" in diagnostic method claims. The PAB held that the term "determining", with respect to Canadian patent application 2,591,113 (the '113 patent application), cannot be defined to exclude a physical measuring step, when considered within the context of the patent application as a whole. The Board's commitment to a purposive construction of the patent application is indicative of their new willingness to patent diagnostic methods.

In the past, the Canadian Intellectual Property Office (CIPO) considered diagnostic methods as unpatentable subject matter, and thus outside the definition of "invention" as defined in section 2 of the Patent Act. However, their November 2020 guidance document ( PN2020–04) in response to Choue