Patents
Patentable Subject Matter Considered
Commissioner's Decision No. 1334
Obviousness and lack of patentable subject matter were cited by
the Examiner as the basis for rejecting the patent application
before the Patent Appeal Board (the Board). The invention relates
to the "tracking of required payments or refunds of value
added taxes (VAT) for mailpieces."
The applicant argued, and the Board agreed, that the "obvious
to try" aspect of the test for obviousness was not applicable
in this case. The Board conducted an obviousness analysis and found
that the invention is not obvious in light of the cited
references.
In terms of patentable subject matter, the Board noted that the
system itself is part of the inventive concept as well as the
functionality of the system. The Board found: "Applying the
guidance in Amazon FCA to this case, the purposively construed
claims include the essential elements that make up the inventive
concept identified above. The Applicant has leveraged these
technological features and capabilities to provide an improvement
upon the conventional postage meter system. Accordingly, we agree
with the Applicant that the invention is actually a mail monitoring
system, which is a new machine." The claims were found to be
patentable subject matter and the decision of the Commissioner of
Patents invited the applicant to make specific amendments to the
claims.
Patent Application Refused on Basis of
Obviousness
Commissioner's Decision No. 1336
The patent application "sets out conventional methods for
determining costs of motor vehicle insurance." The Patent
Appeal Board considered the issues of obviousness and patentable
subject matter.
The claims were found to cover patentable subject matter. The
Board found a number of features essential to the invention that
"comprises technical features and physical steps sequenced to
achieve the practical result of updating an insurance premium based
on monitored characteristics and transmitting specific information
to the insured over the Internet." However, the patent
application was found by the Board to be obvious, and was refused
by the Commissioner of Patents.
Other News of Interest
The Canadian Intellectual Property Office issued a new Trade-marks Examination Manual.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.