IP monitor - Canadian Patent Office Guidance on Statutory Subject Matter: Getting It Right This Time?

April 2012 Author: Christopher N. Hunter

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On April 2, 2012, the Canadian Intellectual Property Office (CIPO) released three draft practice notices for public consultation in view of the the Federal Court of Appeal’s decision in Amazon.com’s so called ‘one-click’ patent.1 Consultations of this sort are used by CIPO to solicit feedback on important changes to intellectual property law or practice, including those occasioned by significant court decisions, such as Amazon.com.  The consultation period runs until May 2, 2012 and is open to all members of the public.  Information on how to participate may be found here.

Specifically, the new draft practice notices regard practice respecting inventive concept, statutory subject matter under the Patent Act, and claims to diagnostic methods and medical uses. The first of these, entitled ‘Office Practice Respecting Inventive Concept’, is meant to replace the previous guidelines regarding inventive concept released following the lower court’s decision in relation to Amazon.com’s one click patent.   Despite the fact that the Federal Court of Appeal in Amazon.com specifically stated that “in determining subject matter solely on the basis of the inventive concept, the Commissioner adopted an analysis that is incorrect in law,” the majority of the substance of the newly released notices focuses on determining the inventive concept of a claim. However, the guidelines do refer specifically to various legal decisions in offering guidance, something which might be considered to have been lacking in previous releases of similar practice notices.

Footnotes

1 Canada (Attorney General) v. Amazon.com, Inc. et al., 2011 FCA 328 (F.C.A.) [Amazon.com].

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