In March 2013, the Canadian Intellectual Property Office (CIPO)
released practice guidelines (Exam Memo PN 2013-02 and PN 2013-03) regarding
computer-implemented inventions, following the Federal Court of
Appeal decision Canada (Attorney General) v Amazon.com
Inc., 2011 FCA 328. The practice guidelines call for the
evaluation of the subject-matter patentability of a claim for
compliance with section 2 of the Patent Act to be made on
the basis of the essential elements as determined through a
purposive construction, in accordance with principles enunciated by
the Supreme Court in Free World Trust v Électro
Santé Inc, 2000 SCC 66.
It has been approximately eight months since the release of the
practice guidelines by the CIPO. Based on recent decisions released
by the Patent Appeal Board (PAB), a promising trend for inventors
has emerged in which claims related to computer-implemented
inventions are often found to be compliant with section 2 of the
Since late 2012, the PAB has released seven decisions in which
statutory subject matter issues regarding computer-implemented
inventions are addressed. In five out of the seven
decisions1, the pending claims have been found to be
patentable subject matter under section 2 of the Patent
Act. In all of these five cases, a computer, a server or
another technical feature interacts with other essential elements
in a novel combination in order to deliver a practical result or
improvement. For example, in Decision No. 1337, a method of
operating a mail processing system with a central computer is found
to be statutory subject matter.2 In the remaining
two decisions3, the computer
implementation of the invention is found not to be an
essential feature as the computer merely provides a convenient
working environment for the method or system to operate.
It appears that when a computer is simply used to execute
mathematical or algorithm models, the practical convenience offered
by the computer alone may not be enough to render the computer
essential for the working of an invention.
2 The PAB found that "[t]he method steps utilize
technology, and are sequenced to achieve the practical result of
selectively interacting with, and replenishing, postage meters from
a central computer," para. 73, Re Decision No. 1337
(06 March 2013), online: Canada Patent Appeal Board & Patents
3 Decision Nos. 1338 and 1339.
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