New Examination Practice Respecting Computer-Implemented Inventions

New Examination Practice Respecting Computer-Implemented Inventions
Michael Maskery, June 1 2013

In March 2013, the Canadian Intellectual Property Office (CIPO) issued new practice guidelines regarding both purposive construction and computer-implemented inventions. This note explores the practice notice relating to computer-implemented inventions (hereinafter "the guidelines"), and in particular when claims to computer-implemented inventions are considered to be statutory subject-matter, in the sense that they are a type of invention which is eligible to be patented, as outlined in Sections 2 and 27(8) of the Patent Act.

Purposive construction is the accepted practice used by the Courts in interpreting patent claims. It essentially asks, from the point of view of a person skilled in the art on the date of publication of the patent application: "What was the patent applicant trying to claim?" Purposive construction is based on the words of the claim, interpreted in light of the entire specification. An important part of purposive construction involves identifying which, if any, elements of the claim are non-essential. In particular, an element is non-essential if the language of the claim makes it clear that the element is indeed not essential, or if the person skilled in the art would have known of a substitute to the element that would perform substantially the same function in substantially the same way to obtain substantially the same result.

The guidelines begin by establishing that certain practices outlined in Chapter 16 (Computer Implemented Inventions) of the Manual of Patent Office Practice (MOPOP) are no longer in use. This includes practices relating to the concept of "statutory contribution," and the requirement that a claim must be a "technological solution to a technological problem" or lie within a "field of technology." This is not surprising, as such practices have never been widely accepted and indeed were struck down by the Federal Court of Appeal in Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328. We also note that such practices are not confined to Chapter 16 of MOPOP, but also appear for example in Chapter 12 (Utility and Subject Matter) and Chapter 13 (Examination of Applications).

A major theme of the guidelines is summed up on page 2, which states that "where a computer is found to be an essential element of a construed claim the claimed subject-matter will generally be statutory." This appears to be a consequence of the more general principle, also set forth on page 2, that “[if] it is determined that the essential elements of a construed claim are limited to matter excluded from the definition of invention, … the claim is not compliant with Section 2 of the Patent Act.” Provided examples of statutory elements are those elements which either have physical existence or manifest a discernible effect or change in something physical. Moreover, the guidelines state that mere ideas, schemes, plans, or sets of rules are not statutory elements, although it is arguable that Canadian law does not specifically contain such an exclusion.

In an attempt to clarify the discussion, the guidelines identify two types of invention: those that solve a "computer problem" (e.g. a problem with the operation of a computer) and those that do not solve a computer problem, but rather use a computer to implement a solution to another problem. Although this distinction is somewhat artificial, the remainder of this note will focus on whether claims solving "non-computer problems" are statutory subject-matter.

The last page of the guidelines attempts to address this concern, by first reiterating that claims to "non-computer problems" will be evaluated based on whether they include a statutory essential element. That is, "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.” Taken along with the guidance on Page 2 of the guidelines (see above), this points toward the conclusion that such a claim will generally be statutory. But the guidelines also caution that this requires careful consideration, as in some cases a computer may simply be added to a claim as a convenience or afterthought. (Or, to read between the lines, the Examiner should be on the lookout for non-statutory subject-matter in disguise). The example is given that if "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." Thus, if the equation can also be solved by pen and paper, then the computer may not be an essential element and the claim may be considered non-statutory as a result.

We note that this is a very specific example of an allegedly non-statutory claim, most probably inspired by the Federal Court of Appeal decision, in Schlumberger Canada Ltd. v. Commissioner of Patents [1982] 1 F.C. 845 (C.A), which upheld that the use of a computer does not serve to convert a (non-statutory) mental process into a statutory “invention.” In particular, the example, as well as the Schlumberger case itself, relates to solving an "equation" by a computer. However, one might observe more generally that computers, by their very nature (at least in their current incarnation), do nothing more than execute a long series of simple steps that could readily be duplicated using pen and paper.

This prompts the question: Does computerized execution of code count, in general, as solving an equation? On the one hand, the Federal Court of Appeal decision in the Amazon.com case explicitly equated a computer algorithm with a mathematical formula, at Paragraph 63:

It is arguable that the patent claims in issue in this case could fail on the same reasoning, depending upon whether a purposive construction of the claims in issue leads to the conclusion that Schlumberger cannot be distinguished because the only inventive aspect of the claimed invention is the algorithm – a mathematical formula – that is programmed into the computer to cause it to take the necessary steps to accomplish a one-click online purchase. On the other hand, it is also arguable that a purposive construction of the claims may lead to the conclusion that Schlumberger is distinguishable because a new one-click method of completing an online purchase is not the whole invention but only one of a number of essential elements in a novel combination. In my view, the task of purposive construction of the claims in this case should be undertaken anew by the Commissioner, with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim.

On the other hand, it is arguable that executing low-level computer code to support certain types of fundamental computer functions, such as retrieving data from input devices or memory, manipulating the data, and writing the results to output devices or memory, is fundamentally different from executing high-level computer code in order to perform abstract calculations or other computations in support of an external purpose.

The guidelines have only recently been released. However, there are some indications as to how the new practice will be adopted. The first indication stems from the Federal Court of Appeal Amazon.com decision itself (insofar as it can be presumed that the guidelines were drafted in accordance with the principles handed down by the Court). Paragraphs 62 and 63 of the decision highlight that the Schlumberger decision is still valid, and therefore a patent application may still fail for lack of statutory subject-matter if the only novel or inventive aspect of a claim is an algorithm or a mathematical formula that is programmed into the computer to cause it to take the necessary steps in accomplishing its stated function. The Amazon.com decision also states (again at Paragraph 63) that, on the other hand, purposive construction of the claims may lead to the conclusion that a new method performed by a computer is not the whole invention but only one of a number of essential elements in a novel combination. In this case the Commissioner was directed to undertake purposive construction of the claims anew, “with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim.” Most notably, the Commissioner subsequently and promptly allowed the application, suggesting that the claim held other essential elements that were statutory, perhaps the claimed “client system” and “server system,” which are computers.

Other indications can be found in the Commissioner's Decisions in regards to patent applications that are reviewed by the Patent Appeal Board, decisions which are published by CIPO and are readily available. In particular, Commissioner's Decision Number 1332, dated October 29, 2012, addresses the question of statutory subject-matter in view of the Federal Court of Appeals Amazon.com decision. The claimed invention relates to a system for updating navigation systems installed in vehicles, comprising a number of computer elements programmed to distribute and receive updated navigation data, and a method relating to the operation of such a system. In analyzing whether the claims are statutory subject-matter, the Commissioner’s decision again quotes Paragraphs 62 and 63 of the Amazon.com decision, and concludes that the system and method claims of the patent at issue comprise “a number of elements in a novel combination.” The claims are described having elements that comprise technical features and physical steps sequenced to achieve a practical result. The decision further holds that “the computer limitations of the elements are essential, i.e. they cannot be omitted, or substituted for mental means, without having a material effect on the operation of the invention. The claims are therefore considered to be statutory.”

The above two cases deal with computers which are programmed to interact with each other in order to provide a specific service. As such, it would be difficult to substitute another means, such as pen and paper, for the computer components without changing the way in which the inventions work. In such cases, and presumably in other cases as well, the current climate seems to be generally favorable to computer-implemented inventions.

A final note: The guidelines fail to follow a further, well-accepted principle of purposive construction, articulated in the seminal Supreme Court Decision in Free World Trust v. Electro Santé, that, if the inventor expressly intends that a particular element is essential, this intention shall be taken into account. In view of this, it may be useful to clearly state, in the specification, that, for example, “the computer component is intended by the inventor to be an essential element of the claimed invention,” or otherwise establish that the computer component cannot be substituted without having a material effect on how the invention works.