Move follows Federal Court ruling that CIPO use “purposive construction” not “problem-solution” test
The Canadian Intellectual Property Office has issued new guidelines for reviewing patent applications, moving from the “problem-solution” approach it had been using to the “purposive construction” test that it was directed to employ by a recent Federal Court of Canada ruling.
Lawyers say it is a positive move, especially as there appears to be no move to appeal the ruling. But they add they will wait to see whether the new guidance, outlined last month, clearly follows the directive in Yves Choueifaty v. Attorney General of Canada, or simply continues the rules it has been using with new wording.
“I will say CIPO was very quick in getting the guidelines out,” says Matthew Zischka of Smart and Biggar. “We’ll see where this goes, but I’m not convinced that the guidelines take us sufficiently far away from its old practice.
“The new approach seems to just suggest ‘we’ll figure it out.’ The framework has yet to evolve around that approach, and that leaves [patent] applicants with some uncertainty.”
Jonathan Pollack and David Ruston with Marks & Clerk wrote in a recent blog post that “it appears that the Canadian Intellectual Property Office (CIPO) has simply repackaged its former approach under new terminology.”
Under the problem-solution approach used before being challenged by the Choueifaty case, the CIPO used the problem-solution approach to dismiss a claim's elements as “non-essential.” The stripped claim was then rejected under s. 2 of the Patent Act as being patent-ineligible subject matter.
With the new guidance issued in November, CIPO examiners are instructed that “for each claim, the identification of the actual invention must be grounded in a purposive construction of the claim and cannot be determined solely on the basis of a literal reading of the claim.”
Pollack and Ruston write that while this seems promising, the guidance continues to state: “An element may thus be an essential element of the claim because the applicant intended it to be essential even though it has no material effect on the working of the invention.”
That element would “not form part of the actual invention” because the fact that it has no material effect on the working of the invention “means it does not cooperate with other elements of the claimed invention.” Such an approach would be like the problem-solution guidelines the CIPO has been using, Pollack and Ruston write.
The claim would have to be rejected under subs. 27(8) of the Patent Act as directed to a “mere scientific principle or abstract theorem.”
However, in an interview, Pollack says that while these general guidelines may not be as clear on purposive construction as hoped for, given the Choueifaty decision, the actual examples given by the CIPO in the same reference note look a “lot more promising.”
One of the examples Pollack points to involves computer-implemented methods of analyzing data from seismic measurements. It comprises: (A) performing seismic measurements; (B) receiving data from the seismic measurements; (C) processing the data on a computer using algorithm X, and; (D) displaying the results of the analysis.
Before Choueifaty, Pollack notes the Patent Office would likely have identified elements (A) and probably (D) as “context” and stripped them from the claims. The remaining elements (B) and (C) would have been rejected as not being patent-eligible subject matter because they are abstract.
But now, Pollack says, CIPO would likely look at this example this way: “Essential element step A cooperates in combination with the computer processing steps (B-D) to produce better results by use of the algorithm X. As step A includes measurements that rely upon discernible physical effects to produce their data, step A provides the discernible physical effect or change that renders the subject-matter of the claim patentable subject-matter.”
Says Pollack: “If the patent office follows the logic set forth in this example, it could be a very positive development for patent applicants.”
Zischka also notes that the examples do indicate the CIPO will be more flexible in granting patents, “but what is missing is some clear roadmap, flow chart or formula" for applicants to follow. This way, applicants can “frame their application to get the most likelihood of being accepted,” he says, noting that the process is time-consuming and expensive.
In medical diagnostics, another sector where the “problem-solution” approach made many applications ineligible for a patent, the updated guidance is also seen generally as positive by lawyers working in this area.
Patricia Folkins, Melanie Szweras, Sandra Marone and Iris Cheung of Bereksin & Parr wrote in a recent blog: “Patent examiners will now have to consider all steps identified in a claim to be essential, unless the language indicates otherwise and suggests that for diagnostic methods, the data acquisition and the correlation steps will both be considered when assessing patentable subject matter.”
CIPO’s new guidelines provide examples of patentable and non-patentable material in this way. The first example provided is directed to a claim for a method of diagnosing the risk of developing cancer comprising measuring the level of X and comparing the level of X to a reference.
The patent office considers this claim to be patentable subject matter under the updated approach. The rationale is that the measuring element, comparing element and correlation element must cooperate for the invention to work. The measuring element satisfies the physicality requirement of patentable subject matter.
However, the guidance contrasts this example with one that would not meet the requirement. In the non-patentable example, the first step no longer measures the level of X but instead “receives a report” regarding the level of X. Since the first step “no longer has any physicality to it,” both steps or elements of the claim could be mental steps, or “disembodied ideas.”
The guidance on patentable subject matter by CIPO is “clearly a win for the diagnostic industry in Canada,” the Bereskin & Parr note says. However, it also notes that when it comes to medical uses that include dosage regimes, it might not be as clear on patentable subject matter.
Jennifer Marles, of Oyen Wiggs in Vancouver, says she is glad that the CIPO has recognized that the “previous way it was approaching things was wrong.” However, “the devil’s in the details, so we’ll have to see how it all works out.”