May 22, 2024

A recent Federal Court of Appeal decision references the latest guidance under PN2020-04 noting that redetermination of the patentability of the applications under consideration in the decision should be carried out, in light of the most current version of the Manual of Patent Office Practice (MOPOP) with the benefit of its reasons. 

PN2020-04 can be found on CIPO’s website.

This guidance supersedes sections of the current iteration of the MOPOP. For example, the references in MOPOP chapters 12, 17, 18, 22 and 23, to the “contribution” of a claim; to a “technological solution to a technological problem”; and, to the “problem and solution” approach in the identification of essential elements during purposive construction may no longer be applicable (emphasis added).  

Purposive Construction – In Light of the Whole of the Specification. PN2020-04 starts with a purposive construction of the claim in view of the principles set out by the Supreme Court, and unlike some other jurisdictions, the purposive construction of a claim is carried out in light of the whole of the specification and a person skilled in the art would understand from the whole of the specification to be the “nature” of the invention.  

Identification of Essential Elements – All Elements Presumed Essential. An essential / non-essential analysis identification is conducted, but all elements are presumed essential unless established otherwise or contrary to the language used in the claim. This is different than the approach from PN2013-02, where the identification of the essential elements was based on an identification of the proposed solution to the disclosed problem, and the examiner could designate certain elements as “non-essential.” However, as noted in PN2020-04, it appears that the essential element aspect is now distinguished from the “Actual Invention,” as noted below. 

Identification of the Actual Invention. PN2020-04 applies an “Actual Invention” identification that is grounded in a purposive construction and cannot be determined solely on the basis of a literal reading of the claim, or a determination of the “substance of the invention.”  The Actual Invention can be either a single element that provides a solution to a problem or a combination of elements that provides a solution to a problem. Importantly, if a combination of elements that cooperate together is the Actual Invention, all of the elements of the combination must be considered as a whole.  

Not all Essential Elements Form Part of the Actual Invention. Interestingly, PN2020-04 considers essential elements that purportedly have no material effect on the working of the invention to “not form part of the actual invention because the fact that it has no material effect on the working of the invention means it does not cooperate with other elements of the claimed invention.”  

Computer-Implemented Inventions. PN2020-04 provides commentary on whether the computer cooperates together with other elements of the claimed invention and thus is part of a single Actual Invention, stating that if “a computer is merely used in a well-known manner, the use of the computer will not be sufficient to render the disembodied idea, scientific principle or abstract theorem patentable subject-matter.”  

A first example is given of a computer programmed to run a mathematical algorithm, and if the computer merely processes the algorithm in a well-known manner and the processing of the algorithm on the computer does not solve any problem in the functioning of the computer, it does not appear to be patentable subject matter as it does not form part of a single Actual Invention.

A second example is given where the algorithm improves the functioning of the computer, and then the computer and algorithm would together form a single Actual Invention.  
This should be compared against the guidance from PN2013-03, where CIPO had provided commentary around factors that indicate the existence of a “computer problem.”

Business Methods. There is a specific section noting that to constitute patentable subject matter, a business method that is an abstract idea must cooperate with other elements of the claimed invention so as to become part of a combination of elements making up an actual invention that relates to the manual or productive arts and either has physical existence or manifests a discernible physical effect or change.

Practical Considerations. When drafting patent applications, extra effort should be taken to work with inventors to identify and elaborate on the technical underpinnings of a computer-implemented technology, taking steps to emphasize any potential benefits as they relate to improving the functioning of a computer.  

Patent documents should provide technical details relating to explaining how the computer operates, including providing any explanation of improved processing speeds, reduced processing time, improved efficiency, optimized resource usage, improved visual elements, and so forth.  

Inventions may be in the field of cryptography, machine learning, and artificial intelligence), where different approaches to data processing methodologies, data structures, computer architectures (virtual or physical), and data schemas can all potentially improve the functioning of the computer. Specific applications and advantages should be outlined in the patent document. Incorporating specific wording from PN2020-04 may be helpful when drafting applications to be filed in Canada.

For more information, please contact your IP professional at Norton Rose Fulbright Canada LLP.

For a complete list of our IP team, click here.