In March 2013, the Canadian Intellectual Property Office (CIPO) released practice guidelines (Exam Memo PN 2013-02 and PN 2013-03) regarding computer-implemented inventions, following the Federal Court of Appeal decision Canada (Attorney General) v Inc., 2011 FCA 328. The practice guidelines call for the evaluation of the subject-matter patentability of a claim for compliance with section 2 of the Patent Act to be made on the basis of the essential elements as determined through a purposive construction, in accordance with principles enunciated by the Supreme Court in Free World Trust v Électro Santé Inc, 2000 SCC 66.

It has been approximately eight months since the release of the practice guidelines by the CIPO. Based on recent decisions released by the Patent Appeal Board (PAB), a promising trend for inventors has emerged in which claims related to computer-implemented inventions are often found to be compliant with section 2 of the Patent Act.

Since late 2012, the PAB has released seven decisions in which statutory subject matter issues regarding computer-implemented inventions are addressed. In five out of the seven decisions1, the pending claims have been found to be patentable subject matter under section 2 of the Patent Act. In all of these five cases, a computer, a server or another technical feature interacts with other essential elements in a novel combination in order to deliver a practical result or improvement. For example, in Decision No. 1337, a method of operating a mail processing system with a central computer is found to be statutory subject matter.2 In the remaining two decisions3, the computer implementation of the invention is found not to be an essential feature as the computer merely provides a convenient working environment for the method or system to operate.

It appears that when a computer is simply used to execute mathematical or algorithm models, the practical convenience offered by the computer alone may not be enough to render the computer essential for the working of an invention.

Links to Patent Appeal Board decisions