Canada updates computer patent guidelines
Canada’s Patent Office has revised its patent examination guidelines for computer-related subject matter to reflect the Federal Court of Appeal’s decision in Canada (Attorney General) v Amazon.com, Inc.
The guidelines, published on March 8, state that the Patent Office must carry out a purposive construction of patent claims that will objectively determine what a person skilled in the art would, at the time of the application and on the basis of the claim, “have understood the applicant to have intended to be the scope of protection sought for the disclosed invention”.
To perform a purposive construction, the guidelines state that examiners should identify the problem inventors have set out to solve with their invention and the solution proposed. Examiners should also carefully consider whether a computer is essential to that solution.
The amendments bring Canada’s guidelines more in line with a Court of Appeal ruling criticising the Canadian commissioner of patents’ decision to reject Amazon’s patent application for its one-click shopping method.
Amazon’s application had been rejected because the commissioner concluded that the claimed invention is not an “art” or “process” as defined under section 2 of Canada’s Patent Act.
Amazon appealed against this rejection and in a verdict delivered in November 2011, Court of Appeal judge Karen Sharlow ruled that the commissioner’s assessment of Amazon’s patent claim was wrongly based on a “determination of the ‘actual invention’”, rather than a purposive construction of the claims.
Sharlow said this assessment was incompatible with Canadian law. Citing the Supreme Court’s decision in Free World Trust v Électro-Santé Inc. and Whirlpool Corp. v Camco Inc., she added: “purposive patent construction is an antecedent to the determination of the validity or infringement of a patent”.
Stephen Beney, a partner at Bereskin & Parr LLP, said the “purposive construction” approach outlined in the updated guidelines “should be welcome news to patent owners and will hopefully introduce a bit more certainty in Canada when it comes to computer-related inventions”.
But while the guidelines should lead to a more consistent approach when examining computer-related patent applications, he also said the inclusion of a European-style “problem and solution” approach to examinations could lead to confusion.
“The 'problem and solution’ language is turning up in recent Canadian case law, but the problem and solution approach does not find support in the Canadian Patent Act. It will be interesting to see how [the Canadian Intellectual Property Office] implements this,” he added.
