Federal Court of Appeal Reluctant to Impose Patentable Subject Matter Test Due to Undeveloped Jurisprudence.
Canada’s Federal Court of Appeal (FCA) has varied a previous decision of the Federal Court (FC) that had set out a framework for assessing patentable subject matter. The earlier decision had been notable in two ways: first, the framework was proposed to the Court by an intervenor, the Intellectual Property Institute of Canada (IPIC); and second, the Federal Court had taken the unusual step of compelling the Commissioner of Patents to use the framework. The new decision, issued July 26, 2023, disposes of that framework and reverses that earlier direction.
In its decision, the appellate court expresses skepticism at the appropriateness of the earlier ruling. Instead, it rules that the determination of patentability should be carried out “in light of the most current version of the Manual of Patent Office Practice (MOPOP) with the benefit of these reasons.” As the name implies, MOPOP is the Canadian Intellectual Property Office’s (CIPO) guide to administrative and examination practices, and contains the Office’s distillation of Canadian jurisprudence on all matters relating to patents. In recent years, CIPO’s interpretation of the jurisprudence in the area of patentable subject matter has been a matter of some debate and is, in large part, what had led the Federal Court to issue its unusual direction.
Specifically, over the past decade, CIPO has instructed patent examiners to consider only certain elements of a claim when assessing patentable subject matter and, in particular, only those elements that have been variously branded as being directed to the “substance of the invention,” “inventive concept,” or “actual invention.” This has inevitably required examiners to assess novelty and inventiveness when considering patentable subject matter, and has led to equally inevitable disagreements with patent applicants.
The IPIC framework sought to limit the scope of the patentable subject matter inquiry to a simpler consideration of whether the claim, when construed as a whole, was directed to an excluded category, or to a patentable category of invention. Questions of novelty and obviousness would then be addressed separately.
In its reasons, the FCA states that there is “no basis in Canadian case law as it currently stands for limiting the Commissioner’s consideration of the concepts of novelty and ingenuity to the analyses in application of sections 28.2 and 28.3 [of the Patent Act]” (i.e., the sections of the Patent Act specifically dealing with the novelty and non-obviousness requirements). The FCA cautions that Canadian jurisprudence is not fully developed in this area and that it would be “premature” and “quite unwise” to attempt to settle the issue before it is properly considered by the courts. Moreover, the FCA notes instances in the jurisprudence where novelty or ingenuity may have been relevant factors in assessing patentable subject matter.
Following this decision, a claim must still be construed purposively and as a whole at the outset of the subject matter analysis. However, examiners will once again be able to search for the “actual invention” before determining the question of subject matter eligibility.
In its conclusions, the FCA urged the Commissioner of Patents to cooperate with IPIC to “properly bring the issues that remain to be determined by Canadian courts.” Indeed, the decision notes one such case relating to a computer-implemented invention, which had been held in abeyance pending the outcome of this appeal, and which presumably now will move forward. However, at least for now and for the immediate future, patent applicants can expect CIPO to continue to assess patentable subject matter based solely on the claim elements deemed as contributing to the “actual invention” as characterized by examiners.