CIPO Releases New Guidelines Following Choueifaty: New Hope for Software Innovation in Canada

The Federal Court’s recent decision in Choueifaty v Canada (Attorney General) is breathing new life into the patentability of computer-implemented inventions. Mr. Choueifaty appealed the rejection of his patent application on the grounds that the Commissioner of Patents did not apply the proper test when construing the essential claims of the patent application. The Federal Court allowed the appeal and instructed the Commissioner to re-assess the application. In response to this case, CIPO released new guidelines emphasizing a purposive construction of the claims in a patent application.

The patent application at issue concerned a computer-implemented method for weighing investment portfolio assets. The application was initially rejected because the essential elements were said to fall outside of the definition of “invention”. Section 2 of the Patent Act defines an invention as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. Defining a computer-implemented invention as a “machine” or “process” is controversial because, under section 27(8) of the Patent Act, mere scientific theorems or abstract principles are not patentable. This results in a somewhat grey area in software, where an algorithm itself may not qualify, but its computers and hardware can be both a machine and a process. This article by Andrew Currier and Stephen Perry provides interesting insights on the challenges in construing software claims.

To assess a claim’s essential elements, section 12.02.02e of CIPO’s Manual of Patent Office Practice suggests a problem-solution approach. Here, the essential elements of a claim are those which are necessary to achieve the disclosed solution to an identified problem. In Choueifaty, the Federal Court opined that the Commissioner was incorrect to use the problem-solution approach for construing claims, but instead should have used the purposive construction test set out in Whirlpool and Free World Trust (at para 38).

When determining whether an element is essential, the purposive construction test requires the examiner to ask the following questions:

“(1) Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.

(2) Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.”

Indeed, in response to Choueifaty, the Canadian Intellectual Property Office (CIPO) released new guidelines on the subject matter of claims related to computer-implemented inventions, medical diagnostic methods, and medical uses. In doing so, they confirmed that the Commissioner should use purposive construction, not the problem-solution approach, to construe claims. Furthermore, CIPO clarified that when a computer is identified as an “essential element”, the subject-matter is not automatically patentable. The Commissioner must consider whether (1) the computer cooperates with the other elements as a single invention and (2) the invention has physical existence. A computer used in a well-known manner will not suffice to allow its scientific principles or abstract theorems to be patentable as a single invention. To qualify, the algorithm must improve the computer’s function.

CIPO included examples of patentable subject-matter under the new guidelines, such as a computer algorithm which analyses seismic measurements. This added performance discerns a physical effect which renders the claim to the algorithm, in cooperation with the computer’s other elements, patentable. However, a hypothetical computer-implemented method which merely receives, processes, and displays seismic measurements is not patentable because the disclosure focuses only on the algorithm (input/output), which neither has a physical existence nor causes any physical changes.

Beyond the scope of Choueifaty, CIPO clarified that when determining the patentability of medical diagnostic methods, all elements in a medical diagnostic claim are presumed essential unless established otherwise. As this article points out, the previous approach would exclude the “elements of measuring or detecting the genetic alteration or analyte, finding those elements to be inessential.” According to CIPO, using this [incorrect] approach, the correlation between the analyte and the disease was considered an abstract idea. As a result, this correlation would fail to receive patent protection. Under the new guidelines, the abstract idea combined with the other elements of the claim (i.e. measurement or detection) make up a single invention. In the example provided, a method for diagnosing the risk for developing cancer, measuring the analyte X, and comparing it to a reference sample is patentable. However, a method which includes comparing a report summarizing the levels of X to a reference sample would not be patentable. Thus, a successful claim depends on the physicality of the measurement step.  

Lastly, CIPO clarified that “medical uses” excludes inventions which require the exercise of professional skill and judgement. This is consistent with the established rule that medical treatments and surgery are not patentable. For example, a compound X to treat peptic ulcers is patentable, but a titration regime which requires a medical professional to monitor their patient is not.

CIPO’s response to Choueifaty provides long awaited clarity for construing the essential elements of patent claims. Although Choueifaty did not concern medical diagnostic methods, the guidelines that require patentable subject matter to include a detection and measurement element have ushered in a new era of opportunity for medical innovation.

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is an IPilogue Contributing Editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

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