Go Your Own Way: Canadian Patent Office Instructs Examiners To Disregard Supreme Court Of Canada Precedent In Construing Claims

Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent. The training reiterates CIPO's position that patent examiners can disregard the substantive principles of purposive claim construction defined by the Supreme Court of Canada in Free World Trust1 and Whirlpool2 when construing the claims of patent applications.

The March 2017 internal training presentation entitled "Refresher Training on Purposive Construction (PCon)"3 summarizes patent office practice regarding purposive claim construction. The presentation states that CIPO does "not apply the Free World Trust (FWT) decision strictly in our examination"4 to determine the essential elements of a claim.

In the 2013 Practice Notice Respecting Purposive Construction PN2013-02 (and in many office actions issued since), CIPO and its examiners rely on the 2008 decision of the Federal Court in Genencor5 to assert that the principles of purposive construction from Free World Trust and Whirlpool apply to court proceedings involving issued patents, but not to the examination of patent applications in CIPO. Genencor held that CIPO, specifically a patent re-examination board, should not be held to the same burden as a court in considering and weighing evidence to construe highly technical terms of a patent. Genencor recognizes that examiners will have less time and resources available to consider a patent application as compared to judges in impeachment proceedings in which experts can be examined and...