In October the Canadian Intellectual Property Office (CIPO) released an updated version of Chapter 16 of the Manual of Patent Office Practice (MOPOP). This update reflects changes in how computer and software-based inventions will be handled and what is now considered “patentable subject matter.”

Under the Patent Act, invention means any new and useful art, process, machine, manufacture or composition of matter, and improvements thereto. Chapter 16, however, now provides a narrow definition of “computer-implemented invention,” and makes it clear that a “technological solution to a technological problem” is required in order for a computerized invention to be patentable. This is a change from past practices and appears to make it tougher for applicants to obtain patent protection for computer and software-based inventions in Canada.

In particular, under the new approach, only those features that are “new” and “inventive” will be examined to determine whether the invention falls within a permitted category. Previously, all the claimed features could be considered collectively when reviewing subject matter, and questions of whether particular features were “new” or “inventive” were considered through a separate analysis. Based on revised Chapter 16, patent Examiners will be allowed to ignore known features (e.g., a processor, a memory, etc.) and categorically exclude computer and software-based inventions without considering their overall inventiveness.

The timing of the revisions to Chapter 16 is puzzling. Although there was general agreement that the chapter needed updating, the law in this area is very much in flux. In fact, many of the revisions conflict with the recently issued decision in Amazon.com (for further details see: Rethinking Patentable Subject Matter in Canada). In that decision, the Federal Court was very critical of the recent changes made by CIPO in its approach to patentable subject matter, strongly rejecting all of the proposed revisions (including the “technological solution” approach). As such, the updates to Chapter 16 appear to be inconsistent with current Canadian law.

Furthermore, while the Amazon.com case has been appealed, it will likely be several months before a further decision is rendered (for further details see: Canadian Federal Court of Appeal Set to Consider Patentability of Business Methods). In the meantime, patent applicants in Canada are in uncertain waters, and it is unclear whether patent Examiners should apply the new changes from Chapter 16 or follow the Amazon.com decision. As a result, many practitioners expect the wheels of the Patent Office to grind to a halt with respect to examination of computer and software-based inventions until the appeal decision is released. Ultimately, most are optimistic that the appeal judges will agree with the Federal Court, and expect that this will eventually result in another revision to Chapter 16 that is more favorable to computer and software-based inventions.