Assessment In Parts: Patent-eligible Subject-matter In Canada

• Published date: 13 July 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Borden Ladner Gervais LLP
• Author: Mr Jason Mueller-Neuhaus

Introduction

Since 2009 the Canadian Patent Office¹ has formulated three sets of examination guidelines for assessment of patent-eligible subject-matter.² All three sets of guidelines function in practice to segregate claimed subject-matter into parts, and to assess the patent-eligibility of the claim by the consideration of the parts.

The first two sets of guidelines were invalidated by the courts in the cases of Re Amazon.com Inc.³ and Choueifaty v. Canada (Attorney General)⁴ based partly on the failure to consider the claimed subject-matter as a whole. While the validity of the third, and current set of guidelines has not yet been challenged in the courts directly, their function to assess patent-eligibility based on a consideration of claimed subject-matter in parts has been called into question in a decision by the Federal Court in the case of Benjamin Moore v. Canada (AG).⁵ An appeal of that decision has now been heard by the Federal Court of Appeal,⁶ and at the time of writing a decision is forthcoming.

The basis upon which the current guidelines operate to segregate claimed subject-matter into parts appears to be fundamentally different, however, from that of the previous guidelines. It may not follow from the invalidity of the previous guidelines, therefore, that the current guidelines are likewise invalid. Indeed, and as discussed in this article, the basis operative in the current guidelines appears to be drawn from existing principles which authorize the segregation of claimed subject-matter into parts and the assessment of the validity of the claim by the consideration of the parts separately.

Basic requirements of patent-eligibility

The Canadian Patent Act⁷requires patent-eligible subject-matter to fall within one of the so-called statutory categories of invention listed in the definition of "invention", namely: "art, process, machine, manufacture or composition of matter".⁸ The Act contains only a single categorical exclusion from patent-eligibility, namely that "no patent shall be granted for any mere scientific principle or abstract theorem" ("the abstract ideas prohibition").⁹ The courts have found that calculations and mathematical formulae per se are encompassed by this prohibition, and that mental operations and processes,¹⁰ plans or information transformations involving no change to underlying physical entities,¹¹ schemes or rules (including in relation to games) involving a conventional use of known equipment,¹² and computer programs per se¹³ are not encompassed by the statutory categories.

The courts have held, however, that while a disembodied idea is not patent-eligible, a practical method of application of the idea may be patent-eligible.¹⁴ Relatedly, the courts have held that subject-matter is generally patent-eligible if when performed or employed it involves some physical existence or manifestation of a discernible effect or change ("physicality").¹⁵ At the same time, however, the courts have held that the performance of patent-ineligible subject-matter (e.g. calculations and mathematical formulae) by physical computing devices does not, without more, render the subject-matter patent-eligible.¹⁶

Examination guidelines

The reconciliation of these principles has posed a challenge to the formulation of workable examination guidelines. For example, in the case of a claim defining a computer configured with a novel and inventive, but patent-ineligible, algorithm, it is clear that at one and the same time the computer may involve physical existence, but that the implementation of the algorithm in the computer may involve a transparent attempt to patent what would otherwise be patent-ineligible. The Office's guidelines have thus involved the segregation of claimed subject-matter into parts for the assessment of patent-eligibility, often isolating the physical computer from the algorithm which is equated to a disembodied abstract idea.

Specifically, the previous sets of guidelines effectively segregated and assessed only the 'inventive contribution' of the claimed subject-matter, being that combination of claim elements not taught in the prior art. If such inventive contribution itself lacked the requisite physicality, the subject-matter was regarded to be patent-ineligible...