On 11 January 2021 – in an apparent conclusion to the patent at the heart of the Federal Court's decision in Yves Choueifaty v Attorney General of Canada (2020 FC 837) – the commissioner of patents allowed Canadian Patent Application 2635393 (CA '393) in Commissioner's Decision 1556 (CD1556) (2021 CACP 3).
CD1556 provides insight into how the Canadian Intellectual Property Office (CIPO) will:
- approach patentable subject matter in future; and
- apply the new guidelines on patentable subject matter released in response to Choueifaty (see below).
The Federal Court rejected CIPO's problem-solution approach for determining patentable subject matter in Choueifaty (for further details please see "Federal Court rejects problem-solution approach, opening field for computer-implemented inventions"). The Federal Court found that this previous approach disregarded the intention of the inventor contrary to the purposive claims construction required by the Supreme Court of Canada in Free World Trust v Électro Santé Inc (2000 SCC 66) and Whirlpool Corp v Camco Inc (2000 SCC 67).
The Federal Court set aside the commissioner's decision which had rejected CA '393 and directed the commissioner to consider CA '393 afresh.
The commissioner opted not to appeal Choueifaty. Instead, CIPO released new guidelines on patentable subject matter and provided a set of examples demonstrating their application.
These new guidelines appear to outline a three-step process for determining patentable subject matter (for further details please see "CIPO's new guidelines on patentable subject matter explained"):
- Step 1 – identify 'essential elements' of a claim using purposive construction in accordance with the principles set out in Free World Trust and Whirlpool.
- Step 2 – determine an 'actual invention' of the claim, which "may consist of… a combination of elements that cooperate together to provide a solution to a problem". The actual invention does not necessarily include every element identified to be essential at Step 1.
- Step 3 – determine whether the actual invention of the claim has physical existence or discernible physical effect or change.
In CD1556 the commissioner found the subject matter of CA '393 to be allowable when applying the new guidelines above.
With respect to Step 1, the commissioner readily found that all claimed elements were essential elements of the claims:
[28] 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.
With respect to Step 2, the commissioner accepted the applicant's submissions that one purpose of the invention is "to provide 'an improvement in computer technology' by improving computer processing" (Paragraph 30). The commissioner also accepted affidavit evidence that an algorithm of the claimed inventions transformed a concave function requiring maximisation into a convex function that could be minimised, and that using the latter meant that significantly less computer processing power and speed was required to perform a subsequent portfolio optimisation. The claimed algorithm thus "improves the functioning of the computer used to run it", which led the commissioner to find that the computer and the algorithm together formed a single actual invention that solved a problem relating to the manual or productive arts (Paragraph 34).
The commissioner distinguished CA' 393 from the patent application that was the subject of Schlumberger Canada Ltd v Commissioner of Patents ([1982] 1 FC 845 (FCA)) as follows:
- The computerised calculations recited in the claims at issue in Schlumberger were merely a computerisation of the mental process of making calculations according to certain mathematical formulae, with no indication that "the invention lay in the computer calculating its results with less processing or greater speed".
- Conversely, the computerised calculations recited in the claims of CA '393 were not merely for yielding information, but were for permitting the computer to carry out portfolio optimisation procedures with significantly less processing and greater speed (Paragraph 35).
With respect to Step 3, the computer which formed the single actual invention noted above provided the claims with the necessary physical existence.
In CD1556 the commissioner subsumed Steps 2 and 3 into a determination of "patentable subject matter" which was entirely separate from the determination of the essential elements of the claims under Step 1. This suggests that future points of contention between applicants and CIPO will likely revolve around delineating the actual invention of a claim and whether this actual invention renders the claim patentable subject matter, rather than around the essential elements of the claim.
CD1556 also suggests that CIPO will deem a computer-implemented invention to be patentable when it accepts that the actual invention is directed to solving a problem with the functionality of the computer, such as by improving the computer's processing speed or reducing the amount of computing resources required. As in CD1556, an algorithm which improves the functioning of the computer used to run it will be considered patentable. However, an algorithm which is merely the computerisation of a mental process of making calculations (with no effect on the functioning of the underlying computer) will not be considered patentable.
Moving forward, if applicable, Canadian applicants seeking patent protection for computer-implemented inventions should consider emphasising – at both the drafting and prosecution stages – how such inventions improve the functioning of the computer or solve a problem with the operation of the computer.
