The Commissioner of Patents has finally but combatively reacted to the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc., 2011 FCA 328 by issuing a practice notice. Apparently the battle continues.

While ostensibly complying with the decision’s requirement to let the claims govern the characterization of statutory subject, the Commissioner now relies on an earlier lower court decision Genencor as an excuse to continue to independently assess what constitutes the “real” invention and to require corresponding claim amendments.

In fact, the Commissioner has collected a small arsenal of justifications to effectively reverse the effect of the FCA decision. The first in this arsenal is the Genencor decision.

Genencor was a trial level decision in judicial review from the patent reexamination board. The Federal Court in that case said that the Supreme Court of Canada’s rules of claim construction (from Whirlpool do not necessarily apply to the reexamination board. The Commissioner interprets that to mean that those rules do not apply to the Commissioner in the course of patent prosecution. But the Federal Court of Appeal decision in Amazon (which was a patent prosecution case) directed the Commissioner to do precisely that when dealing with statutory subject matter issues and to respect the primacy of the claims. The Commissioner offers no basis for giving precedence to the earlier lower court decision.

The Commissioner then purports to rely on the doctrine of purposive construction to allow the examiner to refer to the specification in order to construe the claims according to the examiner’s view of what was actually invented rather than what is expressed in the claim language. Claims are required to be read bearing in mind the purpose and intent of the inventor, but not to rewrite the claims.

A third justification relied on by the Commissioner is that one should look to the “promise” of the invention to characterize a problem and a solution to support flexibility in recharacterizing the claims. The use of the “promise” of the invention has indeed been relied on by Canadian courts but only in relation to attacks on the validity of patents for lack of utility, not for assessments of obviousness or statutory subject matter.

Yet another “justification” is grounded in an argument that the essential elements doctrine allows the examiner to determine which elements of a claim are relevant. That reflects the correct approach to claim construction, but the Commissioner further suggests that an essential elements analysis can be relied on to stipulate as to essential features that should be included in the claims. That approach is not justified in law and it appears that the Commissioner seeks to reserve the right to downplay the language of the claims and to recharacterize the claims based on the examiner’s understanding of the overall specification.

It remains to be seen whether the Office will use these flimsy justifications to ignore the mandate of the Amazon decision and to continue to ignore what the applicant actually claims rather than to object to subject matter based on what the Office thinks should have been claimed.

The practice notice signals how claims will be assessed (at least by the Office) not only for statutory subject matter questions but arguably for any type of assessment requiring a consideration of the claims. But it also signals a more assertive and interventionist approach on the part of our public servants.