The Manual of Patent Office Practice (“MOPOP”) is a manual for patent agents and patent examiners, published by the Canadian Intellectual Property Office (“CIPO”). It provides guidance for the prosecution of patents in Canada.
On August 19, 2010, the period during which CIPO was accepting comments on its revised draft of “Chapter 16: Computer-Implemented Inventions” of the MOPOP ended.
Notwithstanding a near complete rewrite, the core policies of CIPO set out in Chapter 16 remain largely unchanged. However, a number of additional guidelines, practice tips and suggestions provide greater clarity on the contentious areas of: (i) computer and software patents; and (ii) computer-implemented inventions. As well, the amendments clearly align the Patent Office’s practices with the Patent Appeal Board’s decision last year to reject the Amazon 1-Click patent1.
The suggestions relating to drafting applications for computer-implemented inventions include:
- An actual description that addresses the function and use of the computer program must be written, inclusion of the source code or pseudocode is not sufficient. (16.05.02, p. 14, lines 20-24)
- The disclosure does not have to specify the exact method of reducing a series of logic instructions to code for each module. The ability to do this is considered to form part of the general knowledge common to skilled programmers. (16.05.03, p. 14, lines 28-30)
- Broad definitions of programs that use functional language should be avoided as they will likely be construed as having been anticipated by prior art. (16.06.01, p. 16, lines 29-30)
- The automation of an existing manual method for performing a task is considered obvious and not patentable unless it inventively solves a specific challenge to the automation itself, and the steps of the method that are being performed by computer must be unambiguously described as such. (16.07, p. 17, lines 26-31 and 16.08.01, p. 18, lines 5-7)
- When drafting a claim for something other than a machine (for instance, a method, process or software product) then use of the term “system” should be avoided. (16.08.03, p. 18, lines 42-43)
- To be patentable, computer programs must be expressly described as machine-executable code embodied in physical memory of a device. (16.08.04, p. 19, lines 11-13 and 22-23)
- Electromagnetic and acoustic signals are considered to be forms of energy, not matter, and as a result cannot be patented. (16.09.05, p. 36, lines 21-25)
The new guidelines also include a number of specific practice tips for the patenting of graphical user interfaces (16.09.01, p. 22), data structures (16.09.02, p. 28), databases (16.09.03, p. 29), computer-aided design programs (16.09.04, p. 32) and signal-generating devices (16.09.05, p. 36).
Even prior to being implemented, the revisions to Chapter 16 provide guidance to prosecutors of computer and software patents. They make CIPO’s position on software and signal patents clearer, and they have made certain prosecution requirements more explicit. Consequently, they should be welcomed by the patent prosecution community, at least until any further clarification of the law is provided upon a judgment from the appeal of the Patent Board’s decision to reject the Amazon 1-Click patent.