Diagnostics and some types of artificial intelligence (AI)
inventions (as well as other computer-implemented inventions) have
often found themselves in the “grey area” of
patentability in many jurisdictions, leading to uncertainty and an
uneven playing field for diagnostics and AI companies. Here in
Canada, the Canadian Intellectual Property Office's (CIPO)
approach to the question of patentable subject matter – what
can be patented – has been much-criticized in recent years as
departing from that which is required in law.
In upholding an appeal by Amazon.com in 2011, the Federal Court
of Appeal ruled that CIPO's attempts to use a
“substance of the invention” test of its own
creation was “incorrect in law.” Rather, the
Court made clear that “determination of subject matter
must be based on a purposive construction of the patent
claims.” Nevertheless, CIPO in the intervening years has
directed its patent examiners to use yet another, novel
“problem-solution” approach
