Revised MOPOP chapters - a first look

CIPO’s consultation has resulted in very few changes to the new MOPOP chapters 12 and 13. IPIC’s submission, echoed by others, which called for the scrapping of the new “field of technology” requirement, “form and substance” examination and examination for “contribution” was rejected without comment.

In the new Chapter 12 on subject matter, CIPO has arguably put business method patents to death by referencing its own decision in Amazon (now currently under appeal):

  • This [non-technological] exclusion applies to many types of commercial interactions, and in some contexts can be descriptively referred to as a “business method” exclusion as was done in Re Application No. 2,246,933 of Amazon.Com.
  • All of the foregoing [schemes, plans, rules, and mental processes], consequently, are not by themselves “inventions” within the meaning of
    section 2 of the Patent Act… In Re Application No. 2,246,933 of Amazon.Com, such a conclusion was reached and was expressed by reference to an exclusion from patentability of “business methods”. The term
    “business method” refers in such a context to a scheme or plan for conducting commercial interactions.

In the new Chapter 13 on Examination, CIPO has given the following new guidance:

  • Each claim must define a solution to a practical problem and must be supported by the description.
  • Identifying which disclosed solution the claim is directed to permits its essential elements to be identified.
  • It is important to remember that the analysis to identify the essential elements is performed in view of the common general knowledge of the person skilled in the art but before the matter of the claim is compared to the teachings of the prior art.
  • A patentable invention must be a novel, inventive technological solution to a problem in a field of technology, and each claim in an application must be examined to determine whether it defines such subject-matter.
  • By “substance” is meant the solution to a particular problem to which, in view of the specification as a whole, the applicant appears to be directing the claim.

In Chapter 13, one addition helpfully clarifies what information should be sent in to Examiners:

Applicants should generally not submit information which is readily available to the examiner (see below). The object of the voluntary submission of prior art is to expedite prosecution by bringing the attention of the examiner to documents that might otherwise not be immediately identified at the outset of examination. Where a document is identified to the Office, the applicant should generally not submit a copy of the document unless they have reason to believe that copies of that document will not be readily available to the examiner.