Practice Guidance Following the Amazon FCA Decision

March 8, 2013

By this notice the Patent Office is clarifying its position with respect to practice following the public consultation on inventive concept and the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc., 2011 FCA 328. The proposed office practice consulted on in April 2012 respecting inventive concept will not be adopted as official practice and PN2011-04 (Practice Subsequent to the Amazon.com Decision) is hereby rescinded.

The Patent Office takes the position that the assessment of whether the claimed subject matter complies with section 2 of the Patent Act ("statutory subject matter") should be based on the essential elements of the claim as determined by a purposive construction of the claim.

The attached Exam Memo PN2013-02 outlines practice guidelines that will assist the examiner to perform a purposive construction of the claims. Additional practice guidance for examiners is provided in Exam Memo PN2013-03 regarding the examination of computer-implemented inventions.

This patent notice is intended to provide guidance on current Patent Office practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

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