Canadian Lawyer Magazine recently quoted Partner Jennifer Marles in an article about the Canadian Intellectual Property Office (CIPO) issuing new guidelines for reviewing patent applications.
These new guidelines move CIPO 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,” notes Canadian Lawyer.
In Yves Choueifaty v. Attorney General of Canada, an important decision for patent applicants concerned about subject matter eligibility, the Federal Court ruled that the problem-solution approach applied by CIPO since 2013 was not consistent with Canadian law. With new guidance issued in November 2020, CIPO is moving to the correct “purposive construction” test. This should make it easier for applicants in the diagnostic, computer-implemented, and business methods fields to pursue patent protection.
While most lawyers quoted in Canadian Lawyer’s article believed that this was a change for the better, many raised concerns as to whether this new approach would be substantively different. Others pointed to the lack of a clear framework or “roadmap” for applicants. As Jennifer Marles said, “the devil’s in the details”.