October 1, 2020
By Isi Caulder, Ray Kovarik and Andrea Ngo
In seeking patent protection for computer-implemented inventions, one of the most common barriers faced by applicants is subject matter eligibility. Computer-implemented inventions are often found to lie outside the scope of the term ‘invention’ as defined by the Patent Act. That is, Canadian patent examiners often find that computer-implemented inventions, as claimed, fail to recite something more than abstract ideas. Generally, in computer-implemented inventions, the claimed subject matter will be statutory if it can be shown that a computer element is an essential element of a construed claim. However, the approach adopted by the Canadian Patent Office to determine the essential elements of a claim has been widely criticized on the basis that it is inconsistent with Canadian jurisprudence and that it is inconsistently applied.
A recent decision by the Federal Court of Canada in Choueifaty v Canada (Attorney General) (“Choueifaty”), however, may change this approach, prompting a revisitation of a recent Commissioner of Patents decision. Alternatively, the Commissioner of Patents may appeal the Federal Court decision. Such an appeal could result in a significant decision relating to claim construction. This is turn would have the greatest impact on the determination of subject matter eligibility since the Federal Court of Appeals decision in 2011 in favour of Amazon.com.
Amazon Technologies, Inc (Re)
Prior to the Choueifaty case, the Commissioner of Patents refused an Amazon Technologies application in Amazon Technologies, Inc. (Re), 2020 CACP 28, Commissioner’s Decision #1548 (“Amazon Commissioner’s Decision”) on the grounds that the claims were not directed to statutory subject matter. In construing the claims, the Commissioner adopted the steps mandated by the Manual of Patent Office Practice (MOPOP), first identifying the problem that the claimed invention sought to solve and then identifying the essential elements of the claims as those required to achieve the solution.
Using this approach, known as the problem-solution approach, the Commissioner found that the essential elements of the application were only the rules and steps of an abstract algorithm and that while computer elements were present, they were not essential because the invention could allegedly be manually implemented using human agents and were not part of the identified problem or solution. The Commissioner found Amazon’s argument that the inclusion of computer-based elements was a strong representation of its intent that these elements be considered essential to be unpersuasive. The Commissioner concluded that giving weight to this argument would lead to literal construction.
Choueifaty v Canada (Attorney General)
In the Choueifaty decision (discussed in more detail here), the Federal Court of Canada weighed in on an appeal of the Commissioner of Patents’ rejection of Yves Choueifaty’s patent application. In that case, the Federal Court found that the Commissioner of Patents had erred in applying a problem-solution approach to determine the essential elements of Choueifaty’s patent application. In using the problem-solution approach as prescribed by the Manual of Patent Office Practice (MOPOP), the Commissioner of Patents had found that the essential elements of Choueifaty’s claimed invention lay outside the concept of ‘invention,’ as set out by section 2 of the Patent Act.
Choueifaty, however, submitted that this approach was at odds with the approach mandated by the jurisprudence, in particular with the principles laid out by the Supreme Court of Canada in Free World Trust and Whirlpool. The Federal Court agreed with Choueifaty, finding that an inquiry into whether a claim element is essential requires both a determination of the effect of substituting or modifying the element, and a determination of the intention of the inventor. The problem-solution approach fails to consider this second aspect.
The Court, however, was careful to not overstep the limits of its powers and remanded the application to the Commissioner, with instructions to take a second look at the application using the approach described in Free World Trust and Whirlpool, rather than the problem-solution approach.
The Amazon Commissioner’s Decision was released a little over a month before the Federal Court handed down its ruling in Choueifaty, and considerations as to whether the Commissioner’s decision would have been different had she had the benefit of the Federal Court’s decision would be speculative.
However, had the Commissioner had the benefit of the Choueifaty decision, she would have been bound to follow the Free World Trust – Whirlpool approach and may have found the essential elements of the claims to satisfy the definition of ‘invention’. Under this approach, determining the essential elements of a claim first requires an assessment as to whether modifying a certain claim element would change the nature of the invention. While the claimed invention in this case may possibly be manually implemented, it is evident that its nature would be significantly altered if the computing elements were to be removed.
Furthermore, the express inclusion of computer-based elements in the claims would have likely been given more weight, as a strong indication that these elements were intended to be essential. However, the computer elements in this application are notably sparse and described in decidedly generic terms, the first claim reciting “a computing system, having a processor and a memory, for executing programmable instructions.” It would not be surprising if the Commissioner found that the inventor could not have intended such generic computer elements to be essential. After all, if these specific computer elements were essential, the inventor would have described them in more specific terms.
Therefore, while the application may have fared better under the 2-step approach, the genericity of its computer elements may prove to be an insurmountable hurdle. Ultimately, while the Free World Trust – Whirlpool approach potentially broadens the scope of patentable subject matter, the courts and CIPO may be wary of claims sprinkled with generic computer elements, for fear of potentially rewarding abstract ideas disguised as patent-eligible computer-implemented inventions.
The full impact of the Choueifaty decision on CIPO’s practices is still being determined, and we will likely not know whether the Amazon Commissioner’s Decision would have faced a different outcome. Amazon may yet appeal the Commissioner’s Decision to the Federal Court, not only because it has been successful in the past, but also because one of its inventors, Jeff Bezos, has the means to do so. In any event, the Choueifaty decision is sure to bring some much-needed clarity to the often confusing approach to claim construction used by CIPO.
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