The Canadian Intellectual Property Office (“CIPO”) has released a set of practice guidelines for its examiners following the Federal Court decision in Inc. v. Commissioner of Patents 2010 FC 1011 (the “ Decision”).  This guidance was distributed on August 1, 2011 to patent examiners in ExamMemo PN2011-04  (the “Practice Guidelines”).

The Practice Guidelines are consistent with the argument recently advanced by the Department of Justice and the Commissioner of Patents on their appeal of the Decision, the case widely regarded as the test case which will determine the approach to assessing subject matter patentability of so-called business method patents in Canada.  That appeal was argued on June 21, 2011 and remains under reserve with a decision not expected until sometime in late Fall.  Accordingly, the Practice Guidelines may require further consideration following the release of the Federal Court of Appeal’s decision.  In the meantime, organizations who have submitted or will soon be submitting patent applications for business method patents should understand the approach that will be taken to their review by CIPO examiners.

According to the Practice Guidelines, when examining an application, an examiner must identify two things in assessing patentability:

  1. what the applicant is claiming as its monopoly (the “claimed monopoly”); and
  2. what the inventors actually invented (the “actual invention” or the “inventive concept”).

An application will be considered defective if either the claimed monopoly or actual invention is not patentable.

The claimed monopoly constitutes the subject-matter which the applicant has “fenced in by the language of the claim”.  The subject matter claimed must fall under one of the five categories of invention (i.e., art, process, machine, manufacture or composition of matter), and otherwise be novel, inventive, useful and sufficiently disclosed.  If there are obvious defects in the language of the claim itself, this will be sufficient grounds for rejecting the application. Four such types of defects are cited in the Practice Guidelines: a claim that fences in only excluded matter; matter that in its totality is old or obvious; matter that in its totality lacks utility; and matter that is not fully supported by the description.

The actual invention is equivalent to the “inventive concept” and refers to what the application discloses as the invention of any given claim, when read in an informed and purposive manner by a person skilled in the art who brings to their reading an understanding of the relevant common general knowledge. An examiner will determine what the actual invention is that is being claimed before considering whether its subject matter is proper statutory subject matter.

The Practice Guidelines further instruct that:

  • missing or superfluous elements in a claim will not automatically render a claim defective;
  • an inventive concept that provides a solution to a non-technical problem (i.e., not involving or concerned with applied and industrial sciences) is not patentable; 
  • a claim is not defective merely because it includes multiple inventive concepts, however, independent analyses should be conducted for each set of elements providing a solution to a problem and at least one inventive concept must relate to patentable subject matter; and
  • a claim can include both statutory and non-statutory inventive concepts, however, only the elements that provide a solution to the technical problem will weigh in favour of patentability.

Specific guidance was also given with respect to computer-related inventions. The Practice Guidelines warn that careful consideration should be given to method claims involving conventional hardware. CIPO notes that “a computer does not become patentable simply because it has been programmed to do something new”, rather the computer itself must constitute a new solution to a technical problem in order for the program to be part of the same inventive concept as the hardware. Also, in determining whether a claim relates to subject matter falling within the definition of “art”, examiners should be careful to heed the warning in the Decision not to restrict the patentability of “practical applications, which might, in light of today’s technology, consist of a slightly less conventional “change in character” or effect through a machine such as a computer” such that the electronic processes within a computer will satisfy the requirement for a physical change if they are relevant to the claim’s inventive concept. 

CIPO has indicated that it will examine applications in accordance with what it believes the law to be with the use of guidelines which are consistent with their submissions to the Federal Court of Appeal in the case. Arguably, it is not interpreting or applying in totum the principles expressed by the Federal Court this year. Whether this approach will stand the test of time (and the Federal Court of Appeal’s review of the Decision) remains to be seen.