Purposive Claim Construction and Computer-Implemented Inventions: a Detailed Analysis of CIPO’s New Guidelines

Abstract:

This article analyzes two Practice Notices released by the Canadian Intellectual Property Office (CIPO) on 8 March, 2013, concerning purposive claim construction and computer-implemented inventions, respectively (collectively, the “Guidelines”). The article discusses Canadian claim construction principles, and concludes that the Guidelines correctly abolish a number of controversial examination practices recently prohibited by Canadian Courts, including assessing patentability based on abstractions, such as the “substance”, “inventive concept”, “actual invention” or inventive “contribution”, and the proposition that “non-technological” inventions are excluded from patentability. However, the article also concludes that the Guidelines fail to adhere to Canadian claim construction principles governing identification of the “essential elements” of the claims. The Guidelines omit the presumption of essentiality and any consideration of the objective intent of the inventor that a particular element is essential irrespective of its practical effect. The Guidelines narrowly focus on a single solution to one problem, which will lead to erroneous conclusions as to whether a claim element has a material effect. The Guidelines also create a novel distinction between computer problems and non-computer problems. These deficiencies raise the risk that Examiners may continue to inappropriately disregard certain claim elements or limitations when assessing statutory subject-matter, resulting in improper rejections.