Patentable Subject Matter Considered
Commissioner’s Decision No. 1334

Obviousness and lack of patentable subject matter were cited by the Examiner as the basis for rejecting the patent application before the Patent Appeal Board (the Board). The invention relates to the “tracking of required payments or refunds of value added taxes (VAT) for mailpieces.”

The applicant argued, and the Board agreed, that the “obvious to try” aspect of the test for obviousness was not applicable in this case. The Board conducted an obviousness analysis and found that the invention is not obvious in light of the cited references.

In terms of patentable subject matter, the Board noted that the system itself is part of the inventive concept as well as the functionality of the system. The Board found: “Applying the guidance in Amazon FCA to this case, the purposively construed claims include the essential elements that make up the inventive concept identified above. The Applicant has leveraged these technological features and capabilities to provide an improvement upon the conventional postage meter system. Accordingly, we agree with the Applicant that the invention is actually a mail monitoring system, which is a new machine.” The claims were found to be patentable subject matter and the decision of the Commissioner of Patents invited the applicant to make specific amendments to the claims.

Patent Application Refused on Basis of Obviousness
Commissioner’s Decision No. 1336

The patent application “sets out conventional methods for determining costs of motor vehicle insurance.” The Patent Appeal Board considered the issues of obviousness and patentable subject matter.

The claims were found to cover patentable subject matter. The Board found a number of features essential to the invention that “comprises technical features and physical steps sequenced to achieve the practical result of updating an insurance premium based on monitored characteristics and transmitting specific information to the insured over the Internet.” However, the patent application was found by the Board to be obvious, and was refused by the Commissioner of Patents.

Other News of Interest

The Canadian Intellectual Property Office issued a new
Trade-marks Examination Manual.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property