Influenced By Decision, CIPO Issues New Guidelines For Patent Examiners

Influenced By Decision, CIPO Issues New Guidelines For Patent Examiners

Amelia Manera is a JD candidate at Osgoode Hall Law School.

In response to the Federal Court’s decision in, the Canadian Intellectual Property Office has issued further guidelines to its patent examiners regarding subject-matter patentability.

At issue in, Inc. v. Canada (Attorney General), 2010 FC 1011, was the patentability of its “one click” method for online purchasing. The “one click” method allows customers to purchase items with the click of a single button. Originally, the Commissioner of Patents denied the patent application stating that the “one click” business method was not patentable subject matter under s.2 of the Patent Act; in other words, it was not an art, process, machine, manufacture or composition of matter. On appeal to the Federal Court, this determination was overturned. The case is currently being appealed to the Federal Court of Appeal. A more detailed description of the business method and history of the case can be found at this previous IPilogue blog post.

On August 1, 2011, subsequent to the Federal Court’s decision, the Canadian Intellectual Property Office (CIPO) issued new practice guidelines to patent examiners. The new practice guidelines replace any contrary guidelines currently in the Manual of Patent Officers Practice (MOPOP) and are meant to further assist patent examiners in their examination of patent applications.  

First, the guidelines sum up general aspects of patent application examinations. For example, the guidelines state that two things must be identified when an application is examined, namely: 1) what the applicant is claiming as its monopoly, and 2) what the inventors actually invented. This basic tenet is further emphasized by stating that if either the claimed monopoly or the actual invention is not patentable then the application must fail.

The guidelines then expand upon the term "actual invention" to provide further assistance to patent examiners regarding patentable subject-matter.  Specifically, CIPO states that it considers the terms "actual invention" and "inventive concept" to be equivalent when the inventive concept is determined using the method described in the Appendix to the guidelines. Furthermore, the guidelines are very clear on the following point: a claim in not patentable unless its subject-matter relates directly to an inventive concept that is statutory (i.e. is an art, process, machine, manufacture or composition of matter), useful, new, unobvious, and fully supported by the description.

The method for determining the inventive concept described in the Appendix is admittedly undertaken in the same informed and purposive way as is done in the construction of the claim. Considerations that should be included in the identification of the inventive concept include, but are not limited to:

1)      What has been defined in the claim;

2)      What was disclosed by the inventors in their specification and drawings, particularly in respect of the features required for the successful operation of the invention;

3)      What, in light of the disclosure and the common general knowledge, appears to be the advance in the art; and

4)      Which features in particular are responsible for the result arising from that advance in the fields of the invention.

In addition, the Appendix explains that when a patent examiner relies on the inventive concept for his conclusions, the examiner’s statement of the inventive concept must be clearly indicated to the applicant. A word of caution to patent applicants: if in a response to the examiner’s report the applicant does not explicitly disagree with the inventive concept statement, then the applicant is deemed to have accepted the statement as being correct and no further opportunity will be given to object. It is also important to note that even if an applicant disagrees with the inventive concept statement, the examiner may still use the statement he believes to be correct in the rest of the analysis.

The guidelines came into effect immediately upon release and will remain in effect until further notice. In the meantime, patent applicants would do well to be aware of the new guidelines and ensure the compliance of their applications and procedures.