Revised Patent Examination Guidelines After the Amazon.com Case

The Canadian Patent Office (Office) has issued a Practice Notice on revised patent examination guidelines in response to the Federal Court decision in Amazon.com Inc v Commissioner of Patents, 2010 FC 1011 (Amazon.com). As previously reported in E-TIPS® here, the Federal Court held that the Commissioner erred in adopting a “form-and-substance” analysis of the patent claims, rather than using principles of purposive construction. Also, the Commissioner’s test for a patentable “art” was too restrictive, because there is no requirement in Canadian law for the material objects in question to change in character or condition. In assessing patentability, the Office states in the Practice Notice that the examiner must separately identify the “claimed monopoly” and the “actual invention”. The “claimed monopoly” is the subject matter of the claim. The “actual invention” or “inventive concept” refers to what the application discloses as being the invention, using purposive construction. The Practice Notice includes additional guidance for examiners on determining the “inventive concept”. For the application to be allowed, both the “claimed monopoly” and the “actual invention” must be patentable. The appeal of the Amazon.com decision was heard by the Federal Court of Appeal on June 21, 2011, but judgment was reserved. In the meantime, an element of uncertainty remains regarding these examination guidelines. For the revised patent examination guidelines, visit: http://tinyurl.com/3qj8mp6 Summary by: Lauren Lodenquai