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Patents - Subject-Matter - Professional Skills. Pharmascience Inc. v. Janssen Inc.
In Pharmascience Inc. v. Janssen Inc. (SCC, 2026) the Supreme Court of Canada dismissed an appeal, this against a Federal CA ruling involving "whether methods of medical treatment are patentable subject matter under the Patent Act".
Here the court finds that "professional skills" are not patentable:(a) Professional Skills Are Not Patentable
[56] First, the principle that methods of medical treatment are not patentable is a specific application of the broader principle, affirmed by this Court, that professional skills — which are unrelated to trade, industry, or commerce — are not patentable subject matter.
[57] After Tennessee Eastman (S.C.C.), this Court in Shell Oil endorsed the Exchequer Court’s conclusion in Tennessee Eastman on that broader basis. It did so without relying on s. 41(1), which remained in force when Shell Oil was decided. Wilson J. held that a patent could issue for a new use for an old substance; in that case, the discovery was that known chemical compounds could be used to regulate plant growth. She explained that the method of closing surgical incisions with an adhesive in Tennessee Eastman was unpatentable because it was not an “art” or “process”, but instead “related to professional skills rather than to trade, industry or commerce” (p. 555; see also p. 554). In support of this view, Wilson J. cited with approval the Exchequer Court’s decision in Lawson. In that case, Cattanach J. held that it “is obvious . . . that professional skills are not the subject-matter of a patent” (p. 111). As he explained:If a surgeon were to devise a method of performing a certain type of operation he cannot obtain an exclusive property or privilege therein. Neither can a barrister who has devised a particular method of cross-examination or advocacy obtain a monopoly thereof so as to require imitators or followers of his methods to obtain a licence from him. [p. 111] [58] In Wellcome (at para. 49), this Court affirmed Wilson J.’s articulation of the broader “policy rationale” of Tennessee Eastman (S.C.C.), a rationale that continues to apply despite the repeal of s. 41(1). Binnie J. noted that s. 41(1) had been repealed, but he also emphasized that methods of medical treatment were “essentially non-economic and unrelated to trade, industry, or commerce” (para. 49, citing Shell Oil, at p. 554). He held that the AZT patent, which claimed a new use for an existing pharmaceutical compound, related to a “commercial offering” and therefore did not improperly monopolize a method of medical treatment (para. 50).
[59] A purposive interpretation of s. 2 confirms that methods of medical treatment are not patentable subject matter. Allowing professional skills to be patentable would not advance the purpose of the Patent Act, which is to stimulate innovation. Professionals are already under ethical obligations to exercise their skills in their clients’ best interests and to share those skills widely. They neither need nor should they receive patent protection to do so. Because professional skills do not respond to the incentives of the patent bargain, patenting them is unjustified. The exercise of professional skills is simply not the kind of inventiveness that the Patent Act is intended to encourage. As Professor Vaver explains:[Professional skills are unpatentable] partly [for] a mixture of ethical and public policy reasons. These include the fact that professionals, often already benefiting from a state-granted monopoly to practise their skills for the public benefit, should not seek to enclose their skills through monopoly or other means, but should rather share them as widely as possible for the public benefit. Professionals, moreover, do not need the spur of a patent to do their best for their clients; professional codes of conduct require that of them in any event. . . .
....
.... Patents should be awarded to encourage desirable inventiveness. Therefore, where the activity is adequately encouraged and would occur even without the prospect of a patent, patenting is unjustified.
(Vaver (2003), at pp. 291 and 304) [60] Nor is it the role of the patent system to regulate professionals in the exercise of their professional skills and judgment. Professionals should not be permitted to fence in their professional skills and judgment in order to extract monopoly profits. As has been observed:In the prevailing view, the patent system should not intrude into the realm of a leading liberal profession where expectations of renown and reward have traditionally taken quite different forms from those which flow from exclusive rights over commercialisation. The spectre of a single doctor reserving the performance of the most satisfactory, possibly life-saving, operation to his or her own team and extracting therefrom monopoly profits on the scale of a successful pop star seemed to put the matter beyond argument.
(W. Cornish, D. Llewelyn and T. Aplin, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (8th ed. 2013), at para. 5-65) [61] The scholarly literature identifies many similar public policy reasons for treating professional skills and judgment — and methods of medical treatment in particular — as unpatentable subject matter, even though some authors question the soundness of these reasons (see, e.g., Vaver (2011), at pp. 315-16; T. Scassa, “Patents for Second Medical Indications and Their Potential Impact on Pharmacare in Canada” (2001), 9 Health L.J. 23, at pp. 24-25; Melnychuk, at pp. 301-2; E. A. Crowne-Mohammed, “The patentability of professional skills and business methods in Canada” (2010), 5 J.I.P.L.P. 119, at p. 120; N. Lipkus and M.-C. Albanese, “Patentability of New and Useful Arts in Canada: In Need of New and Useful Doctrine?” (2011), 27 C.I.P.R. 61, at p. 96; Judge and Gervais, at pp. 658-59; Barrigar and Shaughnessy, at § 2:19; T. Martin, “Patentability of Methods of Medical Treatment: A Comparative Study” (2000), 82 J.P.T.O.S. 381, at pp. 383-89 and 422-23; M. Goudreau, “Brevetabilité, traitement médical et ordre public social” (2008), 67 R. du B. 77, at paras. 48-65; O. Mitnovetski and D. Nicol, “Are patents for methods of medical treatment contrary to the ordre public and morality or ‘generally inconvenient’?” (2004), 30 J. Med. Ethics 470, at pp. 473-74; Bourassa Forcier, Audet and Melançon, at no 4.9.1.5; T. Yasui, “Protecting a Drug Dosage Regime Using Medical Method or Medical Use Patents” (2014), 96 J.P.T.O.S. 316, at p. 342).
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