Pour les praticiens en PI
Dans la cause PROMETHEUS LABORATORIES, INC. v. MAYO COLLABORATIVE SERVICES (628 F.3d 1347 (2010)) la Cour d’Appel fédérale des US se penche sur la question de la matière brevetable.
Selon la cour, la méthode de traitement brevetée satisfait le test « machine-or-transformation ». Bien que la cour reconnait qu’il ne s’agit pas d’un test exclusif dans un contexte Post Bilski , selon ellece test fournie d’importantes indices quand au caractère brevetable du sujet en question:
« ...claims to methods of treatment, which are always transformative when one of a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition. »
« … »determining » step to be transformative because it involves « [s]ome form of manipulation, such as the high pressure liquid chromatography method specified in several of the asserted dependent claims or some other modification of the substances to be measured, [which] is necessary to extract the metabolites from a bodily sample and determine their concentration.«
Concernant les « mental steps »:
« A subsequent mental step does not, by itself, negate the transformative nature of prior steps. »
According to « AMAZON.COM, INC. vs THE ATTORNEY GENERAL OF CANADA, and THE COMMISSIONER OF PATENTS« :
“[61] There is no basis for the Commissioner’s assumption that there is a “tradition” of excluding
business methods from patentability in Canada. The only Canadian jurisprudence cited was made as
obiter and in dissent by Arbour J. in Schmeiser.”
“[69] The Commissioner’s decision introduced one more novel and unnecessary requirement for
patentability into the Canadian patent regime: the technical or technological requirement. She also
suggests that “new and useful knowledge” must be “scientific or technological” in order to
constitute a patentable art. Thus, according to this reasoning, one must now assess whether an
invention – and specifically what has been added to human knowledge – is technological in nature.”
“[70] In fairness, in this instance the Commissioner does glean some of her rationale from the
language in the Patent Rules and Canadian jurisprudence, but this does not translate into an
endorsement or imposition of a “technical test”. There is no reference to such a test in the Canadian
jurisprudence (or none was advanced in this Court). It was not within the Commissioner’s
jurisdiction to introduce one. Once again, the Commissioner’s heavy reliance on the “technical
contribution approach” as discussed in the UK did not correspond with the reality of our Patent Act
or recognize the range of opinions as to its application and appropriateness…”
With regards to the specific Amazon patent application, Amazon’s invention qualified under s. 2 because (1) the system claims require a machine as an essential element of the invention and (2) the method claims are “put the into action through the use of cookies, computers, the internet and the customer’s own action” and results in a “physical effect” on those elements.