The new CIPO guidelines respecting computer-implemented inventions explicitly repudiate central aspects of the MOPOP Ch 16, that was revised as recently as October 1010. The Patent Notice introducing these guidelines says that the occasion for this further revision is the Amazon.com decision 2011 FCA 328, but it is probably more accurate to say that it reflects a general reconsideration of CIPO’s approach, particularly in light of the release of the poorly received proposed guidelines that were released last April. The problems with Ch 16 were apparent prior to Amazon.com and the FCA decision in Amazon.com was ambiguous and difficult to interpret (see my post on Amazon.com here) and so did not in itself compel revision of Ch 16. The new practice guidelines are a major improvement on Ch 16; they are clearer and easier to apply, and they are consistent with the SCC Shell Oil decision. The law itself remains confused as a result of the FCA decision in Amazon.com itself, but the problems with the law will be sorted out in the courts (or possibly the legislature), rather than in battles with the Patent Office. Considerable credit is due to CIPO for have been willing to make such a major change to its position in response to stakeholder feedback.
The debate over the patentability of computer-implemented inventions has played out in terms of the rule against claiming abstract ideas (“No patent shall be granted for any mere scientific principle or abstract theorem”) set out in s 27(8) of the Act. There are two contrasting views of that rule. On one view, the rule prohibits patents for invention where the inventive concept lies solely in an idea, rather than its application. On the alternative view, the rule prohibits only claims to an abstract idea as such; a claim to an application of an idea is acceptable, even if the inventive concept lies solely in the idea. Put another way, the first option sees a rule against claiming abstract ideas while the second view sees a rule against claiming abstract ideas. The difficulty with first view is that all inventions are ultimately based on an idea. If that were a prohibition on patenting, nothing would be patentable. The correct rule is the second, as set out in Shell Oil [1982] 2 SCR 536, 554:
A disembodied idea is not per se patentable. But it will be patentable if it has a method of
practical application.
Despite this, the October 2010 revision of MOPOP Ch 16 on computer implemented inventions adopts the first approach: Ch 16.03.02 “Where a machine implements a non-statutory method, in contrast, inventive ingenuity associated with the method per se does not provide the inventive step necessary to support the patentability of a machine implementing that method. The inventive ingenuity necessary to make the machine patentable must arise in relation to adapting the machine to implement the method.” That is, the ingenuity must lie in the implementation of the algorithm or idea, and not in the algorithm or idea itself. This was referred to as “contribution approach.” The argument is that the inventive contribution must be statutory, and abstract ideas are non-statutory, so if the only inventive contribution is an idea, the invention is not patentable: see MOPOP Ch 13.05.03. This analysis is contrary to Shell Oil, which holds that the inventive contribution may be an idea, so long as the invention as claimed as a concrete application of that idea.
This analysis has been repudiated. PN 2013-03 states expressly that “the ‘contribution approach’ set out in MOPOP Chapter 13 is not to be used,” and sections of Ch 16 which invoke on that concept, including Ch 16.03, are no longer to be relied on.
With PN 2013-03, CIPO appears to have come down firmly in favour of the view expressed in Shell Oil. The guidelines indicates that fine arts and methods of medical treatment are excluded from patentability under s 2 of the Act, but computer-implemented inventions are not on this list. The guidelines also state, citing Shell Oil, that “disembodied inventions” will be unpatentable, as “where the claimed subject-matter is a mere idea” (my emphasis). In general, the guidelines indicate that computer-implemented inventions are not to be treated any differently from any other invention. The bulk of the guidance is concerned with how to identify the essential element of a computer-implemented invention so as to carry out a purposive construction, but it does not say that an invention is unpatentable if the essential element is an algorithm. On the contrary, it implies that an invention where the only contribution is an algorithm is patentable: “For example, if an examiner concludes that the solution to a given problem is to perform certain calculations according to a specific equation, the use of a computer to perform the calculations may expedite the mathematical manipulations without having a material effect on the operation of the equation itself. The examiner could therefore conclude that the computer is not an
essential element of the invention.” But the invention is not unpatentable for that reason.
The bottom line is that software remains patentable in Canada. (Despite Ch 16, software patents had routinely been granted in Canada, after a period of uncertainty subsequent to the FCA decision in Schlumberger [1982] 1 FC 845, 56 CPR (2d) 204 (CA).) The new guidelines are consistent with Shell Oil, and are a major improvement over Ch 16 as it stood. I should add that this is not to say that I believe that software patents are a good thing. That is a separate question, which, in my view, is a question for the legislature rather than the courts or the Patent Office.
The Notice releasing these guidelines says that “Subsequent practice guidance for medical use claims and diagnostic methods will follow shortly.” In light of these guidelines on computer-implemented inventions, we can be reasonably hope that the new practice guidance will not resemble the consultation document on Office Practice Respecting Claims to Diagnostic Methods and Medical Uses, which would have effectively made the USSC Prometheus decision part of the Canadian Patent Office practice.
I interpreted the practice notices differently. Amazon FCA noted that business method patents may not be allowed where the claims cannot be distinguished from Schlumberger. I.e., if the business method is the only inventive aspect, then the claims fail, whereas if the business method is just one among a number of essential elements in a novel combination (drawing the comparison to Schlumberger, this would mean where the computer implementing the method and the method are both essential elements), the claim may be allowed. That, in my view, is why the practice notice distinguishes between a "computer problem", where the computer is an essential element and the claim is therefore statutory, and a "non-computer problem", where the solution is simply implemented by the computer, in which case, the notice states, it must be determined if the computer is an essential element of the solution. To me, that determination is required in order to distinguish the claims from Schlumberger - if the computer is not an essential element of the invention (as determined by a purposive construction of the claims), and instead only the method/algorithm is, then it would not be patentable subject matter. So contrary to what you've said in your article, it seems to me that a computer-implemented method would *not* be patentable where the computer is determined to be non-essential.
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