Materials from a recent refresher training for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO’s examination practices and Supreme Court precedent. The training reiterates CIPO’s position that patent examiners can disregard the substantive principles of purposive claim construction defined by the Supreme Court in Free World Trust v Électro Santé Inc and Whirlpool Corp v Camco Inc when construing the claims of patent applications.

The March 2017 internal training presentation entitled “Refresher Training on Purposive Construction (PCon)” summariss patent office practice regarding purposive claim construction. The presentation states that CIPO does “not apply the Free World Trust (FWT) decision strictly in our examination” to determine the essential elements of a claim.

In the 2013 Practice Notice Respecting Purposive Construction PN2013-02 (and in many office actions issued since), CIPO and its examiners rely on the Federal Court’s 2008 decision in Genencor to assert that the principles of purposive construction from Free World Trust and Whirlpool apply to court proceedings involving issued patents but not to the examination of patent applications before CIPO. Genencor held that CIPO – specifically a patent re-examination board – should not be held to the same burden as a court in considering and weighing evidence to construe a patent’s highly technical terms. Genencor recognises that examiners have less time and resources available to consider a patent application compared to judges in impeachment proceedings in which experts can be examined and cross-examined.

In their practice guidelines and the refresher training, CIPO directs examiners to disregard elements explicitly stated in the claims unless they are “essential to solve the problem” solved by the invention. According to CIPO, it is the examiner, and not the applicant, who is responsible for identifying this problem. Consider a patent application which is filed for an invention the applicant has invented to solve a problem where the claims explicitly recite elements which are essential to solve this problem. Then, during examination, the examiner identifies a different problem solved by the invention and determines that these elements are not essential in solving this different problem. Under CIPO practice, the examiner is entitled to disregard these elements. He or she may then reject the application because the essential elements of the claim – as identified by him or her – do not define patentable subject matter once the non-essential elements are disregarded.

This issue commonly arises with regard to claims rejected for lack of subject matter eligibility. For example, in computer cases, examiners will often characterise the problem solved by the invention such that the computer elements recited in a claim are non-essential and can be disregarded. Once the computer elements are disregarded, the claim is alleged to define an abstract idea or mere scheme.

Rather than perform a purposive construction of the claims, CIPO appears to be instructing its examiners to search for the spirit or substance of the invention. This approach was specifically rejected in favour of purposive construction by the Supreme Court in Free World Trust and, more recently, by the Federal Court of Appeal in Canada (Attorney General) v Amazon.

What is striking about CIPO’s position and its reliance on Genencor is that the Amazon decision – which came years after Genencor and dealt directly with the rejection of claims during examination – states that “the Commissioner’s determination of subject matter must be based on a purposive construction of the patent claims”. (Emphasis added.) In Amazon, the court clearly stated that “the jurisprudence of the Supreme Court of Canada, in particular Free World Trust and Whirlpool, requires the Commissioner’s identification of the invention to be grounded in a purposive construction of the patent claims”.

In Free World Trust, the Supreme Court laid out the principles to be applied when determining whether a claim element can be considered essential or non-essential, relying on a series of cases from the United Kingdom, most notably Catnic Components Ltd v Hill & Smith Ltd (1982, RPC 183) and Improver Corp v Remington Consumer Products Ltd (1990, FSR 181 (Pat Ct)). As explained in the 2016 Federal Court decision in Shire Canada Inc v Apotex Inc (2016 FC 382) in a purposive construction of the claims, to establish that a claim element is non-essential it must be shown “both (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, and (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention” (Shire, paragraph 137). The first step of this approach is inconsistent with office practice and the training being given to patent examiners – in its refresher training CIPO instructs its examiners that “it is not the applicant’s intent which determines essentially”. (Emphasis added). This is inconsistent with the test set out by the court, according to which a claim element will be considered to be essential if it is clear from the wording of the claim that it was intended to be essential.

Recognising that the examination context in CIPO is different from an impeachment proceeding in a court, CIPO should have the procedural flexibility to limit the time and resources required to determine the meaning of terms in a claim. However, procedural flexibility should not allow CIPO or its examiners to disregard substantive principles of law set out by the Supreme Court.  

Resolving this inconsistency will likely require further court or legislative intervention. Unfortunately, given the infrequent nature of appeals from decisions from the Patent Appeal Board it may be some time before a court decision is rendered on this point. Even then, subsequent to the court decisions in Amazon, it did not take CIPO long to again adopt office practices seemingly inconsistent with that decision. It seems likely, therefore, that CIPO will continue to go its own way.

This article was first published by IAM