Canadian Intellectual Property Office issues Practice Notice regarding patentable subject matter

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Intellectual Property Update

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The Canadian Intellectual Property Office has issued updated guidance to its patent examiners on reviewing patent applications for patentable subject matter. This is of particular significance to computer-implemented, medical diagnostic and medical use inventions.

This guidance is in response to the recent decision of Canada’s Federal Court in Choueifaty v. Canada (Attorney General), 2020 FC 837 (“Choueifaty”) - see our earlier article. In that decision, the Federal Court found that the problem solution approach in the Manual of Patent Office Practice (“MOPOP”), presently set out in sections 12.02.02d and 12.02.02e, was akin to using the “substance of the invention” approach which was resoundingly rejected by the Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 (“Free World Trust”).

The Attorney General did not appeal the Federal Court’s decision in Choueifaty and updates to the implicated sections of MOPOP are expected at some point in the future after a consultation process. CIPO has issued a practice notice in the interim titled “Patentable Subject-Matter under the Patent Act” that supersedes portions of MOPOP that have been overturned by Choueifaty.

Prior to the Practice Notice, examiners would have addressed patentable subject matter by identifying a problem and a solution to the problem with guidance from an “examiner’s understanding of the common general knowledge in the art and by the teachings of the description”. In section 12.02.02e of MOPOP, the identification of the problem and solution is then used by the examiner to identify superfluous (non-essential) elements of the claim that are not involved with the identified solution. These superfluous (non-essential) elements would not be considered part of the invention according to MOPOP and thus would not be considered in determining whether the claim included patentable subject matter. This application of MOPOP resulted in many software oriented inventions being declared non-statutory under s. 2 of the Patent Act. As an example, a claim to an apparatus carrying out an innovative computer implemented invention may have all hardware elements involved in carrying out a computer implemented method be declared as non-essential elements leaving an algorithm which would be declared an abstract theorem. Subsequently, the abstract theorem would be objected to under s. 27(8) of the Patent Act as being non-patentable subject matter.

While the exact application of the Practice Notice remains to be seen over the next few weeks, the Practice Notice does appear to have significant changes from the guidance in MOPOP. In particular, the Practice Notice has removed reference to the identification of a problem and solution based on the teaching of the description. Instead, the Practice Notice adheres to the principles of purposive construction outlined in Free World Trust and Whirlpool Corp. v Camco Inc., 2000 SCC 67. In particular, all elements that are set out in a claim are now to be presumed essential. 

Once the claim elements are identified as essential through purposive construction, the claim elements define the subject matter of the claim. According the guidance, the actual invention will then be identified by the examiner and may include disembodied ideas that form the subject matter of the claim. The actual invention will then be used to determine whether the elements of the claim include disembodied ideas, scientific principles, or abstract theorems. If the claim involves such disembodied ideas, scientific principles, or abstract theorems in combination with another element (e.g. a computer system), the Practice Notice states that such claims would not be considered patentable subject matter. Conversely, if the element cooperates with scientific principles, or abstract theorems the Practice Notice states that such claims would be considered patentable subject matter.

To further explain the analysis, CIPO has also published some examples which may be used as a reference tool when drafting claims or amending claims for Canadian applications.

The expectation is that it will be easier to obtain patents on computer implemented inventions under the new guidance. Furthermore, the examples provided by CIPO are particularly useful for patent applicants. A key takeaway from the Practice Notice is that if you have avoided filing applications in Canada before based on patentable subject matter concerns, it is a good time to reconsider that strategy. In addition, if you have recently decided to abandon applications in Canada for patentable subject matters, you may want you reconsider that decision or look into options to reinstate your application. 

In view of the foregoing update, it is important for you to seek advice from a knowledgeable patent lawyer to discuss your application to devise strategies to draft or amend claims in Canada to reduce the risk of a patentable subject matter objection.  

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