Examination Practice Guidance Respecting Computer-Implemented Inventions, PN2013-03

On March 8, 2013, the Canadian Intellectual Property Office (CIPO) issued a new Practice Notice (PN2013-03) to all Canadian Patent Examiners with respect to computer-implemented inventions in view of the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc., 2011 FCA 328 [Amazon FCA].

The Practice Notice advises Examiners that caution must be exercised when relying on the guidance of Chapter 16 (Computer-Implemented Inventions) of The Manual of Patent Office Practice (MOPOP).  In particular, where the guidance invokes the “contribution” of a claim or mandates a “technological solution to a technological problem” as part of a test to ensure that the claimed invention is within a “field of technology”, it is describing these concepts in relation to CIPO practices that are no longer in use.

The Practice Notice requires Examiners to interpret a claim directed to a computer-implemented invention based on the following guidelines:

  1. Subject-Matter

Chapter 16 of MOPOP provides that a computer-implemented invention may be claimed as a method, machine or product.

In applying Chapter 16 of MOPOP, Examiners must take into account the simultaneously released Examination Practice Guidance Respecting Purposive Construction (PN 2013-02), the effect of which was summarized here by Kelly J. Stewart and Tomas Karger.  Specifically, the evaluation of the subject-matter of a claim is to be made on the basis of the essential elements of that claim, which are identified using a purposive construction.

In the event that a computer is found to be an essential element of a claim, the claimed subject-matter will generally be statutory.  Exclusions, however, exist.  For example, Section 27(8) of the Patent Act excludes the patentability of mere scientific principles and abstract theorems.

  1. Claim Analysis

Practice Notice PN 2013-02 mandates the use of purposive construction.

Generally, an Examiner is to identify the problem the inventors set out to solve and the solution disclosed.  Purposive construction must be performed considering the specification as a whole.  The proper identification of the actual invention, which is performed using purposive construction, is necessary to assess whether the claim is patentable.

Identifying the Problem

The Examiner is to identify the problem in view of his/her understanding of the common general knowledge in the art and in view of the teachings of the specification as a whole.

The identification of the problem and solution may be an integrated exercise.  The Examiner is to give consideration to the background of the invention, the objects of the invention, and any specific problems, limitation or disadvantages known in the art or discovered by the inventors, in identifying the problem.

For computer-implemented inventions, a key point may be determining whether or not the problem faced by the inventor was a “computer problem” (i.e., a problem with the operation of a computer) as opposed to not being a “computer problem” (i.e., a problem whose solution may be implemented using a computer).

Factors that may indicate the existence of a “computer problem” include:

  • the description details a specific problem with the operation of a computer;
  • the solution to the problem involves controlling a chip, system component or technical architecture element such as through firmware (embedded software);
  • the description emphasizes challenges or deficiencies in prior computers; and
  • a significant level of detail is devoted to describing technical details, such as the algorithm or logic performed by the computer

Factors that may suggest that the problem was not a “computer problem” include:

  • explicit statements in the description suggesting a problem other than a “computer problem”;
  • the absence of any explicit indication in the application that any practical problems relating to the operation of a computer were overcome; and
  • a relative absence of technical details, despite an indication in the description that the solution be implemented on a computer.

Identifying the Solution

The solution is the element or set of elements that is essential to the successful resolution of the problem.

Where a “computer problem” has been identified, the elements of the solution are those that overcome the problem relating to the operation of the computer, and may include both hardware and firmware.

Where a “computer problem” has not been identified, the Examiner must carefully consider whether the computer is essential to the solution or if its use is simply a convenience or an afterthought.

The description may emphasize a solution that has been described in conceptual terms.  A lack of detail regarding implementation may indicate that a claim being merely the idea to use a computer to carry out certain operations where, in view of the specification as a whole, the claimed elements do not appear to define a specific manner of operating the solution.

Completing the Construction of the Claims

Where 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 solve the identified problem, the computer may be considered an essential element of the claim.