The Canadian Intellectual Property Office Offers Guidance on Examination of Computer-Implemented Inventions

The saga of Canada (Attorney-General) v. Inc., 2011 FCA 328 had a happy ending for, resulting in a Canadian patent for the so-called one-click application. However, for others seeking patent protection for computer-implemented inventions, the Amazon saga did very little to clarify the law surrounding the patent-eligibility of such inventions.

While computer-implemented inventions are not specifically excluded as statutory subject-matter by the Canadian Patent Act, practitioners are still faced with an inability to see the trees for the proverbial (Amazon) forest. And the FCA decision to simply remand the case back to the Commissioner of Patents for further examination failed to actually provide any definition for patent-eligible computer inventions.

As an epilogue to the saga, on 8th March 2013, the Canadian Intellectual Property Office (CIPO) issued two separate guidelines to clarify its position in the wake of Amazon. One of these guidelines is intended to provide specific guidance to patent examiners regarding the examination of computer-implemented inventions. With a stated goal to “ensure efficient, predictable and reproducible examination of applications”, CIPO seemed to be promising up the desperately sought after trees for the forest.

The guidelines provide that if a recitation in a claim directed to a computer element is found to be essential based on a purposive construction, then the invention defined by that claim will generally be directed at statutory subject-matter. The guidelines detail examination steps to be taken in order to make this determination.

Canadian examiners are mandated to construe the claims using a purposive construction, which relies on a problem/solution analysis. The problem faced by the inventors is to be identified. For computer-implemented inventions, it is specifically useful to determine if the problem is a “computer problem” (a problem dealing with computing devices as opposed to a problem with a solution that simply uses a computer). The solution to the problem is then identified, the solution comprising the essential elements to successfully solve the problem. In the case of computer-implemented inventions, the elements may include both hardware and firmware (embedded software). If it is determined that the computer elements are unsubstituteable and are essential to the solution, then the claim is likely directed to statutory subject-matter.

The reinforcement of relying on purposive construction is welcome news to hopeful applicants. However, the guidelines are not without weakness. For example, the problem/solution approach as defined by the guidelines fails to consider the role of prior art in the analysis. The approach may also inappropriately rely on an individual examiner’s technical expertise. There are also passages in the guidelines that seem to diverge from established case law.

CIPO is to be applauded for their efforts in trying to achieve consistent application of the law in the wake of Amazon. On its surface, the issued guidelines take positive action towards clarifying examination procedures for computer-implemented inventions. However, it will be important to monitor how implementation of these guidelines by CIPO unfolds. In the meantime, Canadian patent practitioners must continue to be mindful to see the trees for the forest; as a practical matter, practitioners will have to adjust to the new guidelines in prosecuting applications for computer-implemented inventions.