Introduction
The recent U.S. Federal Circuit decision of Accenture Global Services, GMBH v. Guidewire Software, Inc.1 ("Accenture") is a reminder that American law on patentable subject matter remains unclear. While Canadian law and Canadian Patent Office practice concerning patentable subject matter have been in flux, several decisions rendered by Canada's Patent Appeal Board ("PAB") applying the Canadian Patent Office's new guidelines on examining computer-implemented inventions, particularly those directed at software and business methods, have brought some clarity to patent applicants as to the circumstances under which their inventions will be found to constitute patentable subject matter.
Recent Jurisprudence
In Accenture, a divided Federal Circuit found several system claims invalid for not being directed at patentable subject matter because they added no meaningful limitations to method claims that had been found to constitute ineligible subject matter. The Federal Circuit also said that the system claims would have constituted ineligible subject matter even if considered in isolation, because they did not "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself."2 The Federal Circuit further commented that "simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent ineligible claim into a patent-eligible one."3
In coming to this conclusion the Federal Circuit applied the doctrine of pre-emption, which has guided its reasoning in other subject matter decisions such as the en banc decisions of In re Bilski4 and CLS Bank v. Alice Corp.5 ("CLS Bank"). Notwithstanding this line of jurisprudence, American law on subject matter eligibility as applied to certain classes of computer-implemented inventions is generally considered to be unclear, as evidenced by the fact that the ten judges in CLS Bank rendered six sets of reasons, with the Court equally divided on whether the system claims in CLS Bank constituted eligible subject matter.
A recent Canadian decision on subject matter eligibility of computer implemented inventions is Canada (Attorney General) v. Amazon.com, Inc.6("Amazon.com"), in which the Canadian Federal Court of Appeal, which for patent matters is analogous to the United States Court of Appeals for the Federal Circuit, considered the patentability of Amazon.com's one-click patent application. While Amazon.com's patent was eventually granted, the Federal Court of Appeal made statements similar to those of the Federal Circuit, quoted above, when it opined that implementing an unpatentable business method by programming it into a computer does not, in and of itself, render that business method patentable.7
Canadian Patent Office Practice Following Amazon.com
Taking into account Amazon.com, the Canadian Patent Office released two practice notices ("Practice Notices") directed at construing claims and determining subject matter eligibility of computer-implemented inventions.8 These Practice Notices generally describe how patent examiners will determine whether the essential elements of a claimed invention include tangible objects such as computer equipment, which would generally suffice to cause the claimed invention to be eligible subject matter.
Immediately following their releases, Canadian practitioners were concerned that Amazon.com and the Practice Notices would be applied overly conservatively to the detriment of applicants seeking protection for computer-implemented inventions. The PAB, which is analogous to the American Patent Trial and Appeal Board, has released six decisions in 2013 ("Decisions") applying the Practice Notices to computer-implemented inventions.9 These Decisions provide further clarity to patent applicants as to what the PAB considers patentable subject matter.
In four of the six Decisions, the PAB found that the claimed invention constituted patentable subject matter. While there still is no litmus test for determining whether a claim directed at software or a computer-implemented business method will be found to constitute patentable subject matter, several practice points can be deduced by reviewing the Decisions.
First, the PAB in all of their Decisions either found that all of the claims for which subject matter was at issue constituted patentable subject matter or that none of them constituted patentable subject matter. In one Decision in which the claims were not found to constitute patentable subject matter, the PAB evaluated the method claims first and then proceeded to dismiss the system or computer readable medium claims on the basis that there was "no material difference"10 between those latter types of claims and the method claims. This is reminiscent of the Federal Circuit's reasoning in Accenture. Accordingly, it may be wise to expressly recite tangible equipment in both method and system claims to reduce the likelihood that an Examiner, the PAB, or a court will be able to bootstrap a decision against system or media claims based on reasoning specific to the method claims.
Second, in the two Decisions in which the claims were not found to constitute patentable subject matter, the claims were drafted so that computer equipment recited in the claims' preambles were entirely or primarily responsible for establishing subject matter eligibility. An example of this type of claim is a method claim whose preamble declares that it is a "computer-implemented" method but whose body contains few or no elements expressly directed at tangible computer equipment. While it is arguable that the PAB's approach to claim construction in these two decisions is inconsistent with Canadian jurisprudence, which requires an evaluation of the intent of the inventor regardless of whether that intent is evidenced in a claim's preamble or body, it nevertheless may be wise to expressly recite the presence and use of computer equipment in a claim's body and not to rely only on limitations contained in a claim's preamble to establish subject matter eligibility. For example, in one claim for a "method for conducting electronic commerce transactions" that the PAB found to constitute patentable subject matter, the body of the claim expressly recited the presence of a "merchant server" and the use of that server to provide a purchase request in response to a reference to merchant information. The PAB accordingly found that "having servers in communication over a network is essential to the invention" [emphasis added], and that the presence of this tangible computer equipment was sufficient to establish subject matter eligibility.11
Third, and in accordance with the Practice Notices, when construing claims the PAB attempted to determine the inventive solution to a problem in the prior art and assessed whether this solution required the use of tangible computer equipment. Consequently, when drafting an application it will be useful to closely tie the advance in the art to tangible equipment used to implement or apply that advance. For example, in one of the Decisions the PAB found the solution to be "providing a training data set which can be applied to a neural network predictive model algorithm" [emphasis added]. Although the PAB concluded that a computer was not essential for this solution, the PAB may have concluded otherwise had the inventive solution been characterized as "using computer equipment programmed to implement a neural network trained using a novel training data set". Particularly for applications directed at software and business methods, it is advisable to provide language throughout an application that underscores the essentiality of tangible equipment in executing or performing an underlying algorithm.
Conclusion
Recent decisions from the PAB illustrate that the Canadian Patent Office is being pragmatic when assessing subject matter eligibility of computer-implemented inventions and is finding claims directed at computer-implemented inventions to constitute patentable subject matter. Certain drafting strategies that may increase the likelihood of a claim being found to be patentable subject matter in Canada may be useful when drafting or prosecuting U.S. applications as well. Similarly, patent applications drafted by American patent practitioners to withstand the scrutiny that U.S. courts are applying to computer-implemented inventions may be well suited for Canada.
Footnotes
1 Fed. Cir., No. 2011-1486 (Sept. 5, 2013).
2 Slip Op. at 15.
3 Ibid.
4 545 F.3d 943, 88 U.S.P.Q.2d 1385 (2008).
5 717 F.3d 1269 (2013).
6 2011 FCA 328.
7 Ibid., at para. 61.
8 Exam Memos PN2013-02 and PN2013-03, online at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03628.html .
9 Application 2,306,540 (14 Jan 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1334/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1334").
Application 2,344,781 (22 Feb 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1336/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1336").
Application 2,285,834(06 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1337/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1337").
Application 2,304,195 (14 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1338/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1338").
Application 2,144,068 (28 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1339/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1339).
Application 2,222,229 (28 Mar 2013), PAB Decision, online: CIPO http://brevets-patents.ic.gc.ca/opic-cipo/comdec/eng/decision/1341/summary.html?query=CDATE+%3e%3d+2013-01-05+%3cAND%3e+CDATE+%3c%3d+2013-11-29&start=1&num=10 ("Decision 1341").
10 Decision 1339 at para. 43.
11 Decision 1341 at paras. 15 and 78.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
