CIPO's new guidelines on patentable subject matter explained

Introduction
Three steps for determining patentable subject matter
Step 1: identify 'essential elements' of claim
Step 2: determine 'actual invention' of claim
Step 3: determine whether 'actual invention' of claim has physicality
CIPO's new computer-implemented invention examples
Conclusion and future implications

Introduction

On 3 November 2020 the Canadian Intellectual Property Office (CIPO) released new guidelines on patentable subject matter and a set of examples applying the new guidelines to computer-implemented inventions, medical diagnostic methods and medical uses. The new guidelines supersede current guidance within the Manual of Patent Office Practice for determining patentable subject matter.

These new guidelines and examples are in response to the recent decision of the Federal Court in Choueifaty v Canada (Attorney General) (2020 FC 837), which rejected CIPO's previous problem-solution approach for determining patentable subject matter. The commissioner of patents opted not to appeal Choueifaty (for further details please see "Federal Court rejects problem-solution approach, opening field for computer-implemented inventions").

Three steps for determining patentable subject matter

The new guidelines appear to involve a three-step process for determining patentable subject matter:

• identify 'essential elements' of a claim;
• determine an 'actual invention' of the claim; and
• determine whether the 'actual invention' of the claim has physicality.

Step 1: identify 'essential elements' of claim

The first step involves identifying 'essential elements' of a claim using purposive construction in accordance with the principles set out by the Supreme Court in Free World Trust v Électro Santé Inc (2000 SCC 66) and Whirlpool Corp v Camco Inc (2000 SCC 67).

The new guidelines recognise that "all elements set out in a claim are presumed essential, unless it is established otherwise or is contrary to the language used in the claim". The new examples also appear to readily find that all explicitly recited elements of a claim are essential.

Step 2: determine 'actual invention' of claim

The second step appears to involve determining an 'actual invention' of the claim, wherein this 'actual invention' "may consist of… a combination of elements that cooperate together to provide a solution to a problem"; however, the actual invention is not limited to elements that constitute an inventive aspect of a solution, but should consider all essential elements of a claim that cooperate to achieve the solution.

Of particular significance, the new guidelines emphasise that an 'actual invention' does not necessarily include every element identified to be essential at step 1 above. For example, a claimed element may be an essential element because an applicant intended it to be essential. But this claimed element may not form a part of the actual invention when it has no material effect on the working of the invention and does not cooperate with other elements of the claimed invention.

The new guidelines and examples require the identification of the actual invention covered by a claim to be based on the essential elements of that claim. In this respect, the identification of the actual invention:

• should be grounded in the purposive construction performed at step 1 above;
• should consider all essential elements identified at step 1 above which cooperate together to achieve the solution; and
• cannot be a determination that is not anchored in the language of the claim (and thus cannot be based on a determination of the 'substance of the invention' as prohibited by Free World Trust).

However, at the same time, the actual invention cannot be determined solely on the basis of a literal reading of the claim.

This distinction between the 'essential elements' and the 'actual invention' appears to have no firm basis in Canadian case law.

Step 3: determine whether 'actual invention' of claim has physicality

The third step involves determining whether the 'actual invention' of the claim determined at step 2 above has physical existence or manifests a discernible physical effect or change, and relates to the manual or productive arts. If yes, the claim is directed to patentable subject matter.

The new guidelines appear to require 'physicality' at this step, setting the standard at either physical existence or manifestation of discernible physical effect or change. The requirement of "something that manifests discernible physical effect and change" appears narrower than the requirement of "something that manifest discernible effect and change" enunciated by the Federal Court of Appeal in Canada (Attorney General) v Amazon.com, Inc (2011 FCA 328).

CIPO's new computer-implemented invention examples

In conjunction with the new guidelines, CIPO also released a set of examples applying the new guidelines. These examples include two computer-implemented invention examples. The new guidelines and two examples suggest that CIPO will deem a computer-implemented invention to be patentable in the following situations:

• A computer-implemented invention will generally be patentable when the 'actual invention' includes a computer. These situations typically arise when the actual invention is directed to solving a problem with the functionality of the computer (eg, by improving the computer's processing speed or reducing the amount of computing resources required).
• A computer-implemented invention will also be patentable when the 'actual invention' includes a computer combined with additional physical elements. These additional physical elements may be elements which carry out physical collection, measurement and detection steps that generate data. They may also be subsequent elements which physically carry out commands outputted by the computer or be physical actions performed on the basis of results outputted by the computer.

Conclusion and future implications

The recency of CIPO's new guidelines and examples necessarily means that there is uncertainty in how the new guidelines will be applied in practice and over time. The distinction made by the new guidelines between the 'essential elements' and 'actual invention' of a claim appear to have little basis in Canadian case law and may open the new guidelines to future court challenges.

However, based on the new guidelines and examples, applicants of computer-implemented inventions may wish to consider the following drafting and prosecution strategies to increase their chances at overcoming patentable subject matter objections in Canada:

• At the drafting stage, if applicable, include details in the description of how the invention improves functioning of a computer or solves a problem with the operation of the computer (eg, improving computing speed, reducing computing resources and automating previously subjective human tasks).

Alternatively or additionally, if applicable, include details in the description of physical elements which can be combined with a computer or of physical actions in addition to the processing, storing and displaying steps performed by a computer. These additional elements may be input elements, such as apparatuses which physically collect, measure and detect data to be processed by the computer. These additional elements may also be output elements, such as physical actions performed in response to results outputted by the computer or machines physically controlled by commands outputted by the computer.

• At the prosecution stage, if applicable and when faced with allegations of non-patentable subject matter, amend the claims to incorporate subject matter which improves (or which can be argued to improve) the functioning or operation of the computer. This may include emphasising how a specific processing step improves computing speed or reduces computing resources for example.

Alternatively or additionally, if applicable, amend the claims to include physicality in addition to the computer. This may include explicitly reciting the input elements or the output elements noted above, for example.

For further information on this topic please contact Y Artemis Lai at Smart & Biggar by telephone (+1 604 682 7780) or email (aylai@smart-biggar.ca). The Smart & Biggar website can be accessed at www.smart-biggar.ca.