Introduction

On March 8, 2013 the Canadian Intellectual Property Office (CIPO) released two related practice notices (PN2013-02 and PN2013-03) in response to the Federal Court of Appeal decision in Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 (Amazon). This article discusses how these practice notices provide guidance to examiners on giving claims a purposive construction and on determining whether computer-implemented inventions recite statutory subject matter.

Consistent with the Amazon decision, the practice notices acknowledge that a claim must be given a purposive construction prior to evaluating it against the requirements of the Patent Act and Patent Rules. Accordingly, the practice notices move the examination practice away from a “contribution approach” of claim analysis to the more predictable purposive construction approach.

Guidance on Purposive Claim Construction

The first of the practice notices (PN2013-02) provides guidance to examiners on how to purposively construe claims. It acknowledges that during examination, “the Commissioner’s identification of the actual invention [is] to be grounded in a purposive construction of the patent claims.” This purposive construction is guided by the Supreme Court of Canada decisions of Free World Trust and Whirlpool.

Although the Free World Trust and Whirlpool decisions provide guidance for performing a purposive construction, the practice notice points out that the Whirlpool decision was not directed to examiners for determining whether applications for patents should be granted. As it explains, “the Office considers that the application of the principles of purposive construction discussed in Free World Trust and Whirlpool to the examination of a patent application must take into account the role of the patent examiner and the purpose and context of examination.”

According to the first practice notice, claim construction during examination requires the examiner to interpret each claim: (i) using a fair, balanced and informed approach; (ii) having identified the problem and solution; (iii) in the context of the application as a whole; (iv) to determine which elements of the claim solve the identified problem; and, (v) by focusing on one solution to a problem.

The practice notice explains that “[o]ne aspect of purposive construction is the identification of the essential elements of the claim” and also that “[t]he identification of the essential elements of a claim cannot be performed without having first properly identified the proposed solution to the disclosed problem.” The identification of the essential elements “considers the whole of the application from the perspective of the person skilled in the art having the benefit of common general knowledge in the relevant fields” to provide a “fair, balanced and informed understanding of the subject-matter of a claim.” The practice notice stipulates, “some element or combination of elements defined in the claim must provide the ‘inventive solution’" to a practical problem.

As the practice notice cautions, “one must, however, approach each claim with an understanding that not every element that has a material effect on the operation of a given embodiment is necessarily essential for the operation of the invention. Some elements of a claim merely define the context or the environment of a specific working embodiment, but do not actually change the nature of the solution to the problem.”

To summarize our discussion of the first practice notice, the Office acknowledges that claims must be given a purposive construction when they are evaluated, including when considering whether a claim falls into the definition of “invention.”

Guidance on Computer-Implemented Inventions

The second practice notice (PN2013-03) provides guidance to examiners to “ensure efficient, predictable and reproducible examination of applications” directed to computer-implemented inventions. This practice notice is to be used in conjunction with Chapter 16 of MOPOP which provides guidance on computer-implemented inventions. However, the practice notice cautions that “[w]here the guidance [of MOPOP Chapter 16] invokes the ‘contribution of a claim’ or mandates a technological solution to a technological problem’ as part of a test to ensure that the invention is within a ‘field of technology,’ it is describing these concepts in relation to practices that are no longer in use.”

According to this practice notice “evaluation of the subject-matter of a claim for compliance with section 2 of the Patent Act [which defines the statutory categories of an ‘invention’] is to be made on the basis of the essential elements as determined through a purposive construction.” As set out in the first practice notice discussed above, the purposive construction will result in the identification of essential and non-essential elements.

This practice notice states that “where a computer is found to be an essential element of a construed claim, the claimed subject-matter will generally be statutory,” and that “[w]here, on the other hand, it is determined that the essential elements of a construed claim are limited to matter excluded from the definition of invention (as noted above), the claim is not compliant with section 2 of the Patent Act, and consequently, not patentable.”

Conclusion

These two practice notices provide welcome guidance in line with the Federal Court of Appeal’s Amazon decision. In particular, the CIPO’s guidance for practitioners and applicants of computer-implemented inventions will assist in determining whether applications for these inventions meet the patentable subject matter requirements. The CIPO’s acknowledgment of the paramount importance of a purposive construction will come as positive news for Canadian applicants.