April 20, 2024

A recent Commissioner of Patents decision considered the patentability of an invention relating to a computer-implemented method for modelling three-dimensional surfaces. In 2023, the Federal Court of Appeal addressed the topic of patentable subject matter and computer-implemented inventions in Canada (Attorney General) v Benjamin Moore & Co. Subsequent to that case, the Patent Appeal Board considered patentable subject matter in the context of a gasoline purchasing system. This most recent decision solidifies topics explored in these prior decisions, and provides a framework for applying PN2020-04.


The patent in issue, with Canadian application number 2,939,218, is related to a method and system for modelling three-dimensional surfaces that do not intersect or overlap. The application of this method and system is for prospecting, drilling, or developing an oil field.

The Commissioner of Patents (Commissioner) ultimately decided that claims 1-9, which concerned the process of prospecting, drilling, or developing an oil field, are directed toward patentable subject matter. 

Conversely, the Commissioner decided that claims 10-20, which primarily concern an algorithm for creating a geological model, are not directed toward patentable subject matter because they do not satisfy the physicality requirement set out in PN2020-04.

For this article, it is important to note many of these comments were initially noted in the preliminary review letter issued April 1, 2022, after the final action. In the final action, claims 1-20 were noted to be directed to non-patentable subject matter, but a different approach is proposed at page 6 of the preliminary review letter noting the difference between claims 1-9 and 10-20.

PN2020-04

PN2020-04 sets out how to determine what constitutes patentable subject matter where a patent application concerns a computer-implemented invention. The Federal Court of Appeal’s decision in Benjamin Moore overturned the Federal Court’s decision that had previously declared a new test for patentable subject matter in computer-implemented inventions that superseded the guidance set out in PN2020-04. This recent Patent Appeal Board decision is the first time PN2020-04 has been applied since Benjamin Moore rejected the test set out by the Federal Court.

Patent Appeal Board decision and amendments

In response to the Commissioner identifying defects relating to both patentable subject matter and indefiniteness, the applicant proposed a new set of claims cancelling claims 10-20 and amending claims 1-9. The applicant then amended the claims a second time in response to further indefiniteness defects identified by the Patent Commissioner.

Original Claims

The Commissioner held that claims 1-9 as originally drafted were directed toward patentable subject matter because the steps of “performing drilling” and “collecting data during the drilling” satisfy the physicality requirement in PN2020-04. Although there were computer processing steps included in such claims, the steps of drilling and collecting data “cooperates” with the algorithm contemplated in the computer processing steps to improve the results produced by that algorithm.

The Commissioner held that claims 10-20 as originally drafted were not directed toward patentable subject matter. Regarding independent claim 10, the Commissioner held that “the actual invention is the algorithm for creating a geological model,” which is an abstract idea. The application of this algorithm by computer-related elements was not sufficient to satisfy the PN2020-04 requirement of physicality because, similar to Schlumberger, the application of the algorithm by the computer-related elements constituted the use of “generic computer components” in a “well-known manner.” 

The only other independent claim in claims 10-20 was claim 19, which the Commissioner held was directed toward the same method as described in claim 10 with the addition of “an iterative process to approximate new and adjusted values.” Claim 19 was similarly held to be directed to a set of abstract data manipulations and calculations.

The distinction between claims 1-9 and claims 10-20 is notable insofar as it shows the Commissioner is reticent to deem claims sufficiently “physical” unless there is explicit mention of a practical application in the claims themselves.

Additionally, the Commissioner held that claims 1, 10, and 19 as originally drafted were indefinite. 

Amended Claims

In the first set of proposed claims submitted to the Commissioner in response to the preliminary review letter, the applicant cancelled claims 10-20 in the original claims and amended claims 1 and 3. The majority of the amendments to claims 1 and 3 appear to be directed toward remedying the indefiniteness defect in original claim 1. Concerning this first set of proposed claims, the Commissioner finds that claims 1-9 as amended are directed toward patentable subject matter.

The second set of proposed claims makes minor amendments to resolve certain indefiniteness defects in the first set of proposed claims. The Commissioner ultimately finds that this second set of proposed claims is compliant with the Patent Act.

Practical notes

This decision reaffirms the importance of incorporating elements of physicality into patent claims for computer-implemented inventions, as set out in PN2020-04. It may be helpful to amend claims to recite physical elements. Further, this decision confirms that including language such as “drilling and collecting data during the drilling” can import a sufficient degree of physicality required for patentable subject matter.

The author would like to thank Julia Kafato, articling student, for her contribution in preparing this IP monitor.

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