The Canadian Intellectual Property Office (CIPO) published on August 1, 2011, revised examination guidelines for its patent examiners in the wake of the Federal Court decision released last fall in Amazon.com Inc. v. Commissioner of Patents.
In that decision, the Federal Court upheld 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.”
CIPO appealed the Federal Court’s decision, and a ruling in the appeal is anticipated sometime this fall. For this reason, the timing of the revised guidelines is puzzling.
The guidelines appear to acknowledge at least some of the Federal Court’s direction regarding claim interpretation, making several references to the use of “purposive construction” when construing a claim.
However, there are also several seemingly new terms and approaches introduced. In particular, heavy emphasis is placed on identifying the “inventive concept” of a claim, which “can be defined in terms of some or all of the elements of the claim as construed, while in others it must be defined in different terms.” According to the guidelines, it is this “inventive concept” that is to be assessed when determining whether the claims are directed to patentable subject matter.
In addition, under the revised guidelines, the “inventive concept” must provide a solution to a technical problem to qualify as statutory subject matter. It is not clear how this directive accords with the Federal Court’s firm rejection of a “technological” requirement.
With the Federal Court of Appeal likely to rule in the Amazon case within the next few months, it is quite possible that further revisions to CIPO’s examination guidelines will be necessary. In the meantime, it will be interesting to see how these revised procedures are interpreted and applied by patent examiners.