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CIPO receives comments on patentable subject matter

As part of its consultation with stakeholders, the Canadian Intellectual Property Office (CIPO) has received and published comments on its proposed practice notices relating to patentable subject matter. In April, the CIPO published proposed practice notices and guidance to patent examiners on statutory subject matter under the Patent Act, office practice respecting inventive concept and office practice respecting claims to diagnostic methods and medical uses.

According to the proposed practice notices, to be patentable the “inventive concept” of each claim must be statutory subject matter. The consultation documents include CIPO’s position on how the inventive concept of claims is to be determined including identifying elements of the claim that materially affect the way in which the invention operates so as to provide the solution to a technical problem. The draft guidance notes that an element of a claim that is identified as essential for determining the scope of the monopoly of a claim under purposive construction may not necessarily be part of the inventive concept. There is no discussion about how CIPO’s identification of ‘inventive concept’ for the purpose of determining patentable subject matter is reconciled with the Federal Court of Appeal’s statement that “determining subject matter solely on the basis of the inventive concept” was incorrect in law.

CIPO was required to revisit its position on patentable subject matter after the Federal Court of Appeal released its decision in (see our analysis of this decision), an appeal from a decision of CIPO’s Patent Appeal Board. The Federal Court of Appeal was critical of CIPO’s policy on business method patents and patentable subject matter. After the Federal Court of Appeal’s decision, CIPO granted’s patent application which issued to patent earlier this year.

A number of industry groups, companies, patent professional organizations and individuals submitted comments on the proposed practice notices. Many of the comments were critical of the position taken by CIPO and suggested the practice notices be revised before issued in final form. The Intellectual Property Institute of Canada (IPIC) for example wrote in its submission that the “proposed guidelines are inconsistent with the decision by the Federal Court of Appeal in []”. The Canadian Life and Health insurance Associate, which had intervened in the proceeding, was supportive of the proposed guidance.

CIPO must now review the submissions it has received and issue the final versions of the practice notices to practitioners and patent examiners. We expect CIPO to issue the final versions of the practice notices in the next several months.