CIPO Announces New Consultation on Patentable Subject Matter

The Canadian Intellectual Property Office (CIPO) has announced a new consultation on patentable subject matter. The consultation comes in the wake of the decision of the Federal Court of Appeal in Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328 (“Amazon.com”) last fall, which effectively held that CIPO’s approach to examining whether claims define patentable subject matter was not correct in law. Although the Amazon.com decision dealt primarily with the patentability of business methods, the decision has broad implications for CIPO’s approach to examining patent applications across all fields of technology. Likewise, CIPO’s consultation covers a broad range of subject matter, including business methods, computer-implemented inventions, and diagnostic and medical treatment methods. Thus, the consultation will be of interest to a broad range of stakeholders.

Although there is no explicit reference to the decision of the United States Supreme Court decision in Mayo Collaborative Services v. Prometheus Labs., Inc. (“Prometheus”) in the consultation documents, CIPO announced its plans to hold the consultation on the same day that the decision was released. Thus, it seems likely that the decision in Prometheus has influenced CIPO’s position on diagnostic methods as set forth in the consultation documents.

CIPO has chosen to express the consultation in three separate documents, “Office Practice Respecting Inventive Concept”, “Statutory Subject Matter Under the Patent Act”, and “Office Practice Respecting Claims to Diagnostic Methods and Medical Uses”. These documents set forth some arguably contentious statements, for example providing guidelines on how examiners are to determine the “inventive concept” of a claim (which is defined as “those aspects of the solution that define the new skill or knowledge disclosed by the inventors and thus capture the essence of the invention”), and directing that the subject matter defined by a claim must be limited to or narrower than an inventive concept that is statutory subject matter. Although the consultation documents make clear that the inventive concept is to be determined starting from the claim as purposively construed, such an analytical approach is potentially subject to challenge on the basis that it is contrary to the directive from the Federal Court of Appeal in Amazon.com that patentable subject matter cannot be determined solely on the basis of the inventive concept (at para. 47 of the decision).

There is no doubt that these and other issues raised by the consultation documents will be the subject of much comment on the part of patent practitioners and interested stakeholders across Canada. The consultation will be open for public comment until 2 May 2012. More information on the consultation, including copies of the consultation documents, can be obtained from CIPO’s website here.

By: Jennifer A. Marles

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