Canadian Patent Office Issues New Practice Guidelines In View of, Inc. v. Canada (Attorney General)

Published September 23rd, 2011

     The Canadian Intellectual Property Office (“CIPO”) issued new guidelines for examination of claims of patent applications, based generally on the Federal Court’s decision in, Inc. v. Canada (Attorney General), 2010 FC 1011. The new guidelines took effect August 1, 2011, and are notably different from previous guidelines.

     The new guidelines require each claim of a patent application to be subjected to two separate assessments for patentability, namely (1) what the applicant is claiming as the monopoly, and (2) what the inventors actually invented. If either the claimed monopoly or the actual invention of any claim is not patentable, the application will not be allowed.

     CIPO defines the claimed monopoly as the subject matter of a claim as defined simply by the language of the claim. If the language of the claim is directed to excluded subject matter (e.g. a method of medical treatment), or if the language of the claim defines subject matter that is not novel, not inventive, or lacking utility, then the claim defines a claimed monopoly that is not patentable.

     CIPO defines the actual invention as the subject matter of a claim as defined by “what the application discloses as being the invention covered by the claim”, when the claim is read in an informed and purposive manner by a person skilled in the art. If the actual invention is directed to excluded subject matter, or is not novel, not inventive, or lacking utility, then the claim defines an actual invention that is not patentable.

     CIPO elaborates that the actual invention of a claim is equivalent to the inventive concept of the claim, a term which was introduced into Canadian patent law in the Supreme Court’s decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 in determining obviousness of an issued patent claim in assessing validity. CIPO explains that the inventive concept of the claim is determined by identifying elements of the claim that are required to “provide the solution disclosed by the inventors to the problem being confronted.” From the identified elements, those which relate to an alleged “inventive advance” by the inventors generally define the inventive concept, while elements that simply provide context for understanding the environment generally do not contribute to the inventive concept.

     In addition to the above-noted requirements for actual invention, the new CIPO guidelines further require that: (1) all elements defining the inventive concept, as determined from a fair reading of the description, be included in the claim; and (2) the inventive concept be a solution to a “technical” problem.

     Further details of the new guidelines are provided in the CIPO practice memo dated August 1, 2011.

     It might be considered whether the two-step approach put forth in the new guidelines, namely subjecting each claim to the two separate assessments for claimed monopoly and actual invention, is consistent with the principles of “purposive” construction defined in the Supreme Court’s decisions in Whirlpool Corp. v. Camco Inc., 2000 SCC 67 and Free World Trust v. Électro Santé Inc., 2000 SCC 66. The Supreme Court has clearly established that there is only one step in construing claims, namely performing a single “purposive” construction with adherence to the language of the claims. In Whirlpool, it was stated that “it has always been a fundamental rule of claims construction that the claims receive one and the same interpretation for all purposes.” Along these same lines, the issue of whether the claims should be assessed on the two different bases of “form” and “substance” was addressed more recently in the Federal Court’s decision in, Inc. v. Canada (Attorney General) noted above, in which it was stated “a return to ‘form and substance’ language, no matter what the context, is confusing and unnecessary. Further, it represents a departure from the clear direction of the Supreme Court to apply purposive construction universally.” Whether or not the Federal Court’s decision on this issue is upheld will be determined in the release of the Federal Court of Appeal’s decision of this case, which expected in early Fall 2011. It is conceivable that this latter decision could influence CIPO’s policy to continue with the two-step approach laid out in the new guidelines.

     Applicants will note that the new guidelines instruct examiners to provide a clear statement of what the inventive concept is believed to be in an examination report, and that “where an applicant does not explicitly disagree with an inventive concept statement in a report, examination will proceed on the presumption that the statement is correct.” Applicants should therefore take heed of comments pertaining to inventive concept, and carefully consider their response to such reports so as to avoid any undue limitation of claim scope.

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