CIPO consultation on patentable subject matter

CIPO has released its consultation documents on patentable subject matter. The consultation period is open until May 2, 2012 and relates to both the Federal Court of Appeal’s decision in and diagnostic methods.

The proposed guidelines to examiners suggest that examiners should first determine the inventive concept by purposively construing the claims. The guidelines also suggest that the inventive concept should relate to a practical solution to a problem based on a reading of Section 80(1)(d) of the Patent Rules:

To be patentable, a claim’s inventive concept must be statutory – it must provide a solution to a technical problem and either have physical existence or manifest a discernable effect or change. It is therefore important to identify a statutory inventive concept if one exists.

The guidelines also suggest that elements of the claims can be disregarded if they are not material:

The inventive concept should focus on those elements that are responsible for the useful result central to the disclosed advance in the field of the invention.

The analysis is to be done prior to applying the prior art, done on a claim-by-claim basis and taking into account the preamble of the claim.

Regarding diagnostic methods, the Office wrote that a physical step is not determinative:

An inventive concept limited to the discovery of the significance of the acquired data, or to its understanding or interpretation, is considered to be abstract or a mental method, and thus not statutory. (emphasis in original)

The consultation period for this practice notice ends May 2, 2012. It is expected that industry groups and members of the profession will likely contribute their perspectives on these issues prior to a final practice notice being issued by CIPO.