The Canadian Intellectual Property Office (CIPO) published on
March 8, 2013, revised examination guidelines for its patent
examiners in the wake of the 2011 Federal Court of Appeal decision
in Attorney General of Canada v. Amazon.com Inc.
In that decision, the Federal Court of Appeal upheld portions of
Amazon.com's appeal against the Commissioner of Patents'
refusal of the patent application for its famous
"1-Click" system. The application had been denied on
several grounds relating to statutory subject matter.
The Court specifically rejected the Commissioner's
"technological" requirement for patentable subject
matter, holding it had no basis in Canadian law and that it was
outside the Commissioner's jurisdiction to introduce a new
test. The Court also rejected the Commissioner's "form and
substance" approach to patentable subject matter as
"confusing and unnecessary."
Following the Court of Appeal decision, CIPO released proposed
examination guidelines for public comment. These guidelines
included terminology and approaches that had been disapproved by
the Federal Court of Appeal. Following a comment period in which
numerous submissions were made noting this discrepancy, CIPO
withdrew its earlier proposal.
CIPO have now released a new practice notice relating to
"computer-implemented inventions." This practice notice
expressly advises Examiners that they should not look for an
inventive "contribution" of a claim when assessing
patentable subject matter. Nor are Examiners to consider whether
claims involve a "technological solution to a technological
problem." Rather, Examiners are directed to sections 2 and
27(8) of the Patent Act, which contain the statutory
definition of "invention" and exclusions to patentable
subject matter, respectively.
Examiners are also expressly advised that "where a computer
is found to be an essential element of a construed claim, the
claimed subject-matter will generally be statutory."
A complementary practice notice released concurrently outlines
the approach to be followed by Examiners when interpreting patent
claims, called "purposive construction." Purposive
construction has been endorsed as the correct approach by the
Supreme Court of Canada.
Some curious language remains in the guidelines, such as
references to a European-style "problem and solution"
approach. It remains to be seen how Examiners will implement this
approach in practice.
CIPO did not invite public comment before issuing the new
guidelines, so it will be some time before practitioners have the
ability to fully digest these directives. However, the guidelines
appear to represent at least a partial step toward reconciling
patent examination practice with legal precedent.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).