New Canadian Patent Guidelines on Purposive Construction

In the case, the Court was highly critical of the Canadian Intellectual Property Office (CIPO) for not using “purposive construction” of patents.  On March 8, 2013, CIPO issued new guidelines for Patent Examiners regarding “purposive construction”.  Guideline 1 requires the Examiner to use a “fair, balanced and informed approach” to understand the background knowledge that existed at the time of the invention.  Guideline 2 requires a problem and solution approach in which an invention is considered to be a solution to a practical problem.  There being a “promise of invention” regarding invention providing a solution to the problem identified. Guideline 3 requires context for the meaning of the claims to be drawn from an understanding of the patent application as a whole.  Guideline 4 requires essential elements to be identified in order to determine whether any essential elements are missing from the claim.  Guideline 5 requires each patent to be a solution to only one problem.  Where solutions are proposed to more than one problem, it is suggestive of more than one invention. These guidelines are a huge step forward.  There is one troubling aspect.  Where a problem and solution are not identified by the patent applicant (and there is no obligation to do so in section 80 of the Patent Rules), these guidelines require an Examiner to determine a “problem”, a “solution” and the “promise of the invention” regarding the invention providing a solution to a problem. There will undoubtedly be disputes in future over the Examiner’s interpretation.