On August 1, 2011, the Commissioner of Patents issued a Practice
Notice further to the Federal Court of Canada's decision in
Amazon.com, Inc. v. The Commissioner Of Patents, 2010 FC
1011 ("Amazon.com"). Although a ruling on the
appeal of Amazon.com (heard on June 21, 2011) has not yet
been issued, the Commissioner provided the following revised patent
examination guidelines to patent examiners for determining whether
a patent claim is directed to patentable subject matter. The
Commissioner directed that a patent application should be refused
if either (1) what is claimed; or (2) what is "actually
invented" is directed to only excluded subject matter (such as
a method of medical treatment, an electronic signal or a computer
program). The "actual invention" refers to what the
application, when analyzed in an informed and purposive manner from
the perspective of a person skilled in the art in light of relevant
common general knowledge, discloses as being the invention covered
by a claim.
The Commissioner stressed that the actual invention is
identified without reference to the state of the art. Instead, the
"actual invention" is determined by (i) identifying the
claim elements that are required to provide the solution to the
problem being confronted; and (ii) focusing on those elements that
are relevant to the allegedly inventive advancement. Elements are
not relevant to the actual invention unless they materially affect
the way in which the invention operates to provide the solution
disclosed. A patent claim does not contain patentable subject
matter or provide practical utility if the identified claim
elements do not contribute to solve a "technical"
problem, namely a problem involving the application of scientific
knowledge for practical purposes. Therefore, a computer does not
become patentable because it has been programmed to do something
new, but may be patentable where a computer program causes the
computer to become a new solution to a technical problem.
While the Commissioner does not explicitly state that business
methods are to be excluded from patentability in Canada, it is
apparent that the Patent Office has been largely unaffected by the
Amazon.com decision, and has maintained the position that
only the claim elements that contribute to solve a technical
problem are to be considered for patentability, while all other
claim elements are to be ignored. Particularly notable is that the
Commissioner has not provided directions to employ the
Progressive Games test (Progressive Games, Inc. v.
Canada (Commissioner of Patents), 177 F.T.R. 241 (T.D.) at
para. 16, aff'd (2000), 9 C.P.R. (4th) 479 (F.C.A.)) affirmed
in Amazon.com, for determining whether an art was
patentable subject matter, but has rather maintained that what was
added to the current state of knowledge must be technological in
nature – a requirement rejected in Amazon.com as
being too limiting and beyond the scope of the Commissioner's
powers to introduce.
By instructing patent examiners to selectively ignore claim
elements and to ensure that the remaining claim elements contribute
to solve a technical problem, the Commissioner has provided patent
examiners with the continued power to reject pending business
method claims through a subjectively narrow view of what is
technical. The ruling on the appeal of Amazon.com is
eagerly anticipated and is expected to clarify the scope of the
Commissioner's authority to enforce a technological requirement
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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