For the past four decades, Canadian Intellectual Property Office (CIPO) has been reluctant to grant patents to computer-implemented inventions. Recent Federal Court’s decision in Choueifaty v Canada (AG) 2020 FC 837 (hereafter “Choueifaty”) and the subsequent CIPO’s Practice Notice on Patentable Subject-Matter (hereafter “Practice Notice”) have slightly improved the prospects of the computer-implemented claims. But how?
Those prosecuting such claims in Canada have frequently seen the examiner stating that the computer is not an essential element of the claim, and whatever was left of the claim, had a non-patentable subject-matter. The argument that the “computer is non-essential” was also present in the prosecution of Mr. Choueifaty’s patent application No. 2,635,393.
Back in 2000, the Canadian Supreme Court in Free World Trust v. Électro Santé Inc.,  2 S.C.R. 1024 has specifically emphasized the importance of the inventor’s intent. 20 years later, this Supreme Court’s principle has finally made its way to the prosecution practice and can now be used in a purposive construction for establishing whether a claim’s element is essential or non-essential. Following Choueifaty, CIPO has adjusted its practice by stating in the Practice Notice: “In carrying out this identification of essential and non-essential elements, all elements set out in a claim are presumed essential, unless it is established otherwise or is contrary to the language used in the claim.” Moreover, on the subsequent review of another set of the Choueifaty’s claims by the Patent Appeal Board (Choueifaty (Re), 2021 CACP#3, hereafter “Decision #1556”), the Commissioner has held: “There is no claim language indicating any of the elements to be optional, preferred embodiments or one of a list of alternatives. Nor is there any indication in the record before us that would lead to a determination of any claimed elements being non-essential. We therefore presume all the claimed elements to be essential.” (Emphasis added.)
Although presuming the computer to be essential might have seemed like a victory, the joy was premature. According to the Practice Notice, the finding that the computer is an essential element of the claimed invention at the purposive construction step, must still be followed by an assessment of the patentability of the subject-matter at the second step of the analysis. In such an assessment, CIPO turns back to questioning the importance and the need of the computer in an “actual invention”, and whether the problem solved by the algorithm is a computer problem. To have a patentable subject-matter, the “actual invention” must have a physical existence or manifest “a discernible physical effect or change” (Practice Notice).
To overcome the second step of the patentability analysis, two avenues may be pursued. The first avenue implies providing an evidence that the use of the claimed algorithm reduces the resources used in the computer processing, or otherwise improves the functioning of the computer. For example, an affidavit brought in during the prosecution helped the Commissioner to conclude in the Decision #1556 that the claimed algorithm permitted the optimization with “significantly less processing and greater speed”, and therefore improved the functioning of the computer.
An alternative avenue towards the patentability of the computer-implemented claims was sketched in the Practice Notice and the Examples of Patentable Subject-Matter Analysis (hereafter “Examples”). When there is a support in the description, an actual physical step may be added to a method claim. The examples of such physical steps may be: “performing seismic measurements” and “drilling for oil based on the results of the processing”. However, generic data input or output steps, including “displaying the results of the analysis”, would not render the claim patentable (Examples).
To remedy an apparatus or a system claim, some kind of a sensor providing measurements may be added to the claim (of course, if a support can be found in the originally filed description). If the sensor physically exists and cooperates with the computer to achieve better results, the subject-matter of the claim is patentable (Examples). While any patent practitioner understands that adding a physical step or a sensor to the claim may reduce the scope and the value of the issued patent, it seems that this is the price we may need to pay to get to the Notice of Allowance in Canada.
Although the Choueifaty decision and the subsequent Practice Notice made it easier to convince the Canadian patent examiner that the computer is an essential element of the claim, the door is wide open to the rejections of the computer-implemented applications. When drafting the computer-implemented claims that will be prosecuted in Canada, patent practitioners should still consider (1) whether there is any evidence that the use of the claimed algorithm improves the functioning of the computer and (2) whether a sensor or any physical step can be claimed to render the subject-matter of the claim patentable.
Written by: Irina Kostko, Lawyer, Technical Consultant