Last year, the Federal Court of Appeal issued a decision on the patentability of Amazon’s “one-click” online shopping patent, in which the Court criticized the practices of Canadian Patent Examiners in the context of examining computer-implemented inventions. In the wake of that decision, the Canadian Intellectual Property Office (CIPO) has released two new practice notices to guide examiners in construing claims and determining whether computer-implemented inventions are directed at patent-eligible subject matter.

The guidelines relate to “Purposive Construction” and “Computer-Implemented Inventions”. The new guidelines embrace a form of purposive claim construction that brings CIPO’s practices closer to established case law. Under the new guidelines, examiners are encouraged to “determine what the inventor has actually invented” when assessing eligibility of subject matter, novelty, and obviousness. To do so, examiners are instructed to identify the practical problem that the invention is attempting to solve and the solution that the inventors offer. Under the guidelines, the claimed invention must be an operable solution to that problem, and any elements not essential to the identified solution may be stripped from the claim for the purpose of analysis.

This approach, which applies to all subject matter before CIPO, has attracted some criticism for being a more stringent test for essentiality than is applied by the courts. Notwithstanding those complaints, Canadian patent practitioners will need to adapt to CIPO’s new guidelines to avoid drawn-out prosecutions and costly appeals.

CIPO has provided additional guidance for examiners in the context of computer-implemented inventions. The guidelines instruct examiners to determine whether the problem is a “computer problem” (i.e. a problem with the operation of a computer) as opposed to a non-computer problem (i.e. a problem whose solution may be implemented using a computer). An invention directed toward a computer problem is likely to be statutory subject matter. According to the guidelines, one indication that an invention is directed toward a computer problem is that the application devotes significant detail to describing technical details, such as the algorithms or logic performed by the computer.

While CIPO has historically rejected “business methods” or methods that can be performed by a human instead of a computer (e.g. software is often considered a business method if the computer that executes the software is not claimed or is considered non-essential), the new guidelines do not mention business methods by name, following the Federal Court of Appeal’s instruction to CIPO in the Amazon decision to operate “with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim.” The new guidelines may nevertheless provide an avenue for examiners to reject claims that might previously have fallen prey to the business method exclusion, by allowing examiners to find computers recited in claims to be non-essential and thereafter finding the remaining elements to be a mere scheme or set of rules.

However, the new guidelines offer applicants new means to demonstrate to an examiner that a computer-implemented invention is directed to patent-eligible subject matter. For example, although applicants are not required to expressly state a problem toward which the invention is directed, the guidelines indicate that an express statement of the problem should be accepted by an examiner unless doing so would be “unreasonable on an informed reading of the application in light of the common general knowledge.” Accordingly, it may be advantageous in appropriate cases to expressly indicate that an application is directed toward a problem with the operation of a computer. Similarly, express statements that a computer recited in the claims is essential may be advantageous in some cases, despite a longstanding view in the profession that express statements of essentiality are best avoided. Any potential risk arising from such express statements made during prosecution of a patent application may be tempered by the fact that Canada has not evolved a doctrine of file wrapper estoppel comparable to that encountered in US practice—generally, statements made during prosecution of an application have limited admissibility in Canadian patent litigation.

The new guidelines provide many improvements over CIPO’s former approach. They reject the heavily-criticized “contribution” approach to determining patentability and recognize that prior art is not relevant to determining essentiality. The guidelines are also likely to reduce examiners’ reliance on the “technological solution to a technological problem” test (now reframed as a “technical solution to a technical problem”). Although the guidelines may deviate in some places from the case law, overall they are a promising revision of CIPO’s practices.

By Christopher C. Scott and Amy M. Fong