The Canadian Patent Office has released examination guidelines on computer-related subject matter following the decision of the Federal Court of Appeal in Canada (A.G.) v. Amazon.com, Inc. (2011 FCA 328).

The Patent Office acknowledges that the assessment of statutory subject matter is based on the essential elements of a claim as determined by a purposive construction of the claim.  The guidelines focus on the problem and solution addressed by the inventor to assist with identifying the essential elements.

Performing purposive construction

Purposive construction of a claim is performed considering the specification as a whole and common general knowledge.

The problem and solution addressed by the inventor are identified.  Guidance in identifying the problem and solution should be found in the description, and not by reference to the closest prior art.  Consideration is given as to what the inventor states about the background of the invention, any objectives, specific problems, needs, and disadvantages.  While the description need not explicitly state the problem and solution, a “significant focus” in the description on certain details of the solution may assist in the identification of the problem.

Essential elements of a claim, that provide a solution to the problem, are determined.  In the case of computer-related inventions, a determination is made as to whether a computer is an essential element of a claim.  The guidelines advise that, “[w]here it appears that the computer cannot be varied or substituted in a claim without making a difference in the way the invention works or that the computer is required to resolve a practical problem, the computer may be considered an essential element of the claim”.  For example, if an examiner concludes that the solution to a given problem is to perform certain calculations according to a specific equation, the use of a computer to perform the calculations may expedite the mathematical manipulations without having a material effect on the operation of the equation itself.  The examiner could conclude that the computer is not an essential element of the invention on the basis that, although it may be inconvenient to do so, the calculations would achieve the same result if performed by pen and paper or mentally instead of using the computer.

Assessing statutory subject matter

After purposive construction is performed, statutory subject matter is assessed by determining if the subject matter falls within the definition of “invention” under section 2 of the Patent Act.

Subject matter excluded from the definition of invention includes mere scientific principles and abstract theorems, fine arts, methods of medical treatment, disembodied ideas, and subject matter lacking physicality (i.e. having a physical existence or manifesting a discernible effect or change).

Generally, the Patent Office considers that a good indicator that a claim is directed to statutory subject matter is that it provides a “technical solution to technical problem”.  In the case of computer-related inventions, the Patent Office advises that, where a computer is found to be an essential element, the subject matter will generally be statutory.

Conclusion

The examination guidelines provide practical guidance.  They acknowledge that the assessment of statutory subject matter is based on the essential elements of a claim as determined by a purposive construction of the claim.  They focus on the problem and solution addressed by the inventor to assist with identifying the essential elements.  They advise that practices relating to the “contribution” of a claim and a “technological solution to a technological problem” are no longer in use.  Further, the notice releasing these guidelines indicates that a proposed notice on “inventive concept” will not be adopted.