Canada: Comparing US And Canadian Approaches To Determining Subject Matter Eligibility Of Computer-Implemented Inventions

Last Updated: October 30 2013
Article by Roch Ripley and Pablo Tseng

Most Read Contributor in Canada, October 2018

Introduction

The recent U.S. Federal Circuit decision of Accenture Global Services, GMBH v. Guidewire Software, Inc.1 ("Accenture") is a reminder that American law on patentable subject matter remains unclear. While Canadian law and Canadian Patent Office practice concerning patentable subject matter have been in flux, several decisions rendered by Canada's Patent Appeal Board ("PAB") applying the Canadian Patent Office's new guidelines on examining computer-implemented inventions, particularly those directed at software and business methods, have brought some clarity to patent applicants as to the circumstances under which their inventions will be found to constitute patentable subject matter.

Recent Jurisprudence

In Accenture, a divided Federal Circuit found several system claims invalid for not being directed at patentable subject matter because they added no meaningful limitations to method claims that had been found to constitute ineligible subject matter. The Federal Circuit also said that the system claims would have constituted ineligible subject matter even if considered in isolation, because they did not "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself."2 The Federal Circuit further commented that "simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent ineligible claim into a patent-eligible one."3

In coming to this conclusion the Federal Circuit applied the doctrine of pre-emption, which has guided its reasoning in other subject matter decisions such as the en banc decisions of In re Bilski4 and CLS Bank v. Alice Corp.5 ("CLS Bank"). Notwithstanding this line of jurisprudence, American law on subject matter eligibility as applied to certain classes of computer-implemented inventions is generally considered to be unclear, as evidenced by the fact that the ten judges in CLS Bank rendered six sets of reasons, with the Court equally divided on whether the system claims in CLS Bank constituted eligible subject matter.

A recent Canadian decision on subject matter eligibility of computer implemented inventions is Canada (Attorney General) v. Amazon.com, Inc.6("Amazon.com"), in which the Canadian Federal Court of Appeal, which for patent matters is analogous to the United States Court of Appeals for the Federal Circuit, considered the patentability of Amazon.com's one-click patent application. While Amazon.com's patent was eventually granted, the Federal Court of Appeal made statements similar to those of the Federal Circuit, quoted above, when it opined that implementing an unpatentable business method by programming it into a computer does not, in and of itself, render that business method patentable.7

Canadian Patent Office Practice Following Amazon.com

Taking into account Amazon.com, the Canadian Patent Office released two practice notices ("Practice Notices") directed at construing claims and determining subject matter eligibility of computer-implemented inventions.8 These Practice Notices generally describe how patent examiners will determine whether the essential elements of a claimed invention include tangible objects such as computer equipment, which would generally suffice to cause the claimed invention to be eligible subject matter.

Immediately following their releases, Canadian practitioners were concerned that Amazon.com and the Practice Notices would be applied overly conservatively to the detriment of applicants seeking protection for computer-implemented inventions. The PAB, which is analogous to the American Patent Trial and Appeal Board, has released six decisions in 2013 ("Decisions") applying the Practice Notices to computer-implemented inventions.9 These Decisions provide further clarity to patent applicants as to what the PAB considers patentable subject matter.

In four of the six Decisions, the PAB found that the claimed invention constituted patentable subject matter. While there still is no litmus test for determining whether a claim directed at software or a computer-implemented business method will be found to constitute patentable subject matter, several practice points can be deduced by reviewing the Decisions.

First, the PAB in all of their Decisions either found that all of the claims for which subject matter was at issue constituted patentable subject matter or that none of them constituted patentable subject matter. In one Decision in which the claims were not found to constitute patentable subject matter, the PAB evaluated the method claims first and then proceeded to dismiss the system or computer readable medium claims on the basis that there was "no material difference"10 between those latter types of claims and the method claims. This is reminiscent of the Federal Circuit's reasoning in Accenture. Accordingly, it may be wise to expressly recite tangible equipment in both method and system claims to reduce the likelihood that an Examiner, the PAB, or a court will be able to bootstrap a decision against system or media claims based on reasoning specific to the method claims.

Second, in the two Decisions in which the claims were not found to constitute patentable subject matter, the claims were drafted so that computer equipment recited in the claims' preambles were entirely or primarily responsible for establishing subject matter eligibility. An example of this type of claim is a method claim whose preamble declares that it is a "computer-implemented" method but whose body contains few or no elements expressly directed at tangible computer equipment.  While it is arguable that the PAB's approach to claim construction in these two decisions is inconsistent with Canadian jurisprudence, which requires an evaluation of the intent of the inventor regardless of whether that intent is evidenced in a claim's preamble or body, it nevertheless may be wise to expressly recite the presence and use of computer equipment in a claim's body and not to rely only on limitations contained in a claim's preamble to establish subject matter eligibility. For example, in one claim for a "method for conducting electronic commerce transactions" that the PAB found to constitute patentable subject matter, the body of the claim expressly recited the presence of a "merchant server" and the use of that server to provide a purchase request in response to a reference to merchant information. The PAB accordingly found that "having servers in communication over a network is essential to the invention" [emphasis added], and that the presence of this tangible computer equipment was sufficient to establish subject matter eligibility.11

Third, and in accordance with the Practice Notices, when construing claims the PAB attempted to determine the inventive solution to a problem in the prior art and assessed whether this solution required the use of tangible computer equipment. Consequently, when drafting an application it will be useful to closely tie the advance in the art to tangible equipment used to implement or apply that advance. For example, in one of the Decisions the PAB found the solution to be "providing a training data set which can be applied to a neural network predictive model algorithm" [emphasis added].  Although the PAB concluded that a computer was not essential for this solution, the PAB may have concluded otherwise had the inventive solution been characterized as "using computer equipment programmed to implement a neural network trained using a novel training data set".  Particularly for applications directed at software and business methods, it is advisable to provide language throughout an application that underscores the essentiality of tangible equipment in executing or performing an underlying algorithm.

Conclusion

Recent decisions from the PAB illustrate that the Canadian Patent Office is being pragmatic when assessing subject matter eligibility of computer-implemented inventions and is finding claims directed at computer-implemented inventions to constitute patentable subject matter. Certain drafting strategies that may increase the likelihood of a claim being found to be patentable subject matter in Canada may be useful when drafting or prosecuting U.S. applications as well. Similarly, patent applications drafted by American patent practitioners to withstand the scrutiny that U.S. courts are applying to computer-implemented inventions may be well suited for Canada.

Footnotes

1 Fed. Cir., No. 2011-1486 (Sept. 5, 2013).

2 Slip Op. at 15.

Ibid.

4 545 F.3d 943, 88 U.S.P.Q.2d 1385 (2008).

5 717 F.3d 1269 (2013).

6 2011 FCA 328.

Ibid., at para. 61.

8 Exam Memos PN2013-02 and PN2013-03, online at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03628.html .

Application 2,306,540 (14 Jan 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1334/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1334").

Application 2,344,781 (22 Feb 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1336/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1336").

Application 2,285,834(06 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1337/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1337").

Application 2,304,195 (14 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1338/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1338").

Application 2,144,068 (28 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1339/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1339).

Application 2,222,229 (28 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1341/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1341").

10 Decision 1339 at para. 43.

11 Decision 1341 at paras. 15 and 78.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions