On March 8, 2013, the Canadian Patent Office released examination guidelines for computer-related
subject matter to take into account the Federal Court of Appeal
decision in Canada (Attorney General) v Amazon.com Inc, 2011 FCA 328.
The guidelines acknowledge that the Patent Office must assess
whether claimed subject matter falls within the definition of an
"invention" in the Patent Act and is therefore
statutory subject matter based on the essential elements of the
claim as determined by a purposive construction of the claim.
Performing a purposive construction
The guidelines indicate that a purposive construction of a claim
should be performed by considering the specification as a whole and
the common general knowledge in the relevant art. The guidelines
further state that to perform a purposive construction, an examiner
needs to identify the problem the inventors set out to solve and
the proposed solution. In this regard, the guidelines note that
guidance in identifying the problem and solution should be found in
The purposive construction identifies the essential elements of
a claim. The guidelines caution that not every claim element that
has a material effect on the operation of a given embodiment is
necessarily essential for the operation of the invention. Some
elements of a claim merely define the context or the environment of
a specific working embodiment but do not actually change the nature
of the solution to the problem. The guidelines also note that the
fact that a claim element distinguishes the claimed subject matter
from the prior art does not necessarily mean the element will be
seen as an essential element of the invention for the purposes of
assessing statutory subject matter.
Determining whether a computer is an essential element of a
Where a claim recites a computer, the following guidance is
[T]he examiner must carefully
consider whether the computer is essential to the solution or if
its use is simply a convenience or even an afterthought. For
example, if an examiner concludes that the solution to a given
problem is to perform certain calculations according to a specific
equation, the use of a computer to perform the calculations may
expedite the mathematical manipulations without having a material
effect on the operation of the equation itself. The examiner could
therefore conclude that the computer is not an essential element of
the invention. Although it may be inconvenient to do so, the
calculations would achieve the same result if done by pen and paper
or mentally (i.e. the computer could be varied for another means of
calculating without affecting the operation of the invention).
...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 resolve a practical problem, the computer may be
considered an essential element of the claim.
Determining statutory subject matter
Once the essential elements of a claim have been identified, an
examiner can determine whether the subject matter defined by those
elements of the claim comprises statutory subject matter. In this
regard, if, for example, the essential elements of the claim are
limited to subject matter in the fine arts or subject matter that
lacks practical application, the guidelines note the claim will be
rejected as not constituting statutory subject matter.
The issuance of the new guidelines should be a welcome
development to applicants for computer-related inventions in Canada
as they put an end to the Patent Office's assessment of
statutory subject matter based on the "inventive
concept." Our detailed analysis of the impact of the new
guidelines will follow in the near future.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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