CIPO Issues Examiner Guideline for Computer-Implemented Inventions (PN 2013-03)


After some prior iterations and commentary from the patent bar, the Canadian Intellectual Property Office (CIPO) published a practice note dealing with computer-implemented inventions on March 8, 2013. The practice note is meant to clarify the position of Examiners in light of the recent decision. In a nutshell, CIPO comments on patent-eligible subject-matter in computer-related inventions, going through clearly non-statutory matter (such as specifically excluded fine arts, methods of medical treatment, scientific principles and abstract theorems). Additionally, it comments that inventions which lack physicality (not something with physical existence or which manifests a discernible effect or change) or where the subject-matter is a mere idea, scheme, plan or set of rules are also excluded from the definition of invention.

Interestingly, CIPO comments that where a computer is found to be an “essential element” of a purposively construed claim, the claimed subject-matter will generally be statutory.

A procedural guideline is described which attempts to capture how purposive claims construction should proceed. The discussion varies somewhat from statements made by the Supreme Court in the Whirlpool and Free World Trust cases, which are stated to accommodate the peculiar situation that the Examiner is in, dealing with embryonic claims which have not yet been approved for issuance and are in the midst of negotiated amendments and discussion. The analysis is to include the identification of a problem the inventor is trying to solve, regardless that the inventor is under no obligation to disclose this explicitly, and then the solution proposed by the invention. Following that identification, the solution is broken down into essential and non-essential components. The problem-solution is considered and a determination should be made whether this is a computer problem (that is, dealing with a problem with computing devices), or a problem of another nature which is resolved somehow using a computer. If it is a computer problem, it is likely to be statutory subject-matter. If it is not a computer problem, it must be found that a computer is an essential element, in which case the subject-matter is deemed statutory. If not, the analysis continues as to whether the solution is somehow otherwise statutory, whether it is to an abstract idea or concept for solving a problem, and so forth.

The guidance to Examiners is of interest to practitioners, but is by no means universally accepted as a proper or even adequate restatement of the entire body of law dealing with statutory subject-matter. The guideline is supported by a contemporaneous guidance respecting Purposive Construction (PN2013-02) with which one may also find fault, but which also makes interesting reading.

These Examination Practice guidance documents may be found at CIPO’s website.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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