Patentable Subject Matter – New Notices From Canadian Patent Office, Anticipated Issues for the Court?

The Canadian Intellectual Property Office (“CIPO”) has recently published two notices for patent examiners relating to patent interpretation[i], and in particular computer-related/business method type patents. These notices were released following a 2011 Federal Court of Appeal decision – CIPO v Amazon, 2011 FCA 328 (“Amazon”). In Amazon the FCA instructed the patent office on how to evaluate a patent application to determine the threshold issue of whether it covers patentable subject matter. The FCA held that patent claims must first be purposively construed before one can evaluate whether the claimed subject matter covers acceptable (ie. patentable) subject matter. “Thus, for example, what appears on its face to be a claim for an “art” or a “process” may, on a proper construction, be a claim for a mathematical formula and therefore not patentable subject matter.”

Although both Amazon, and CIPO’s March 2013 notices arose in the context of Amazon’s business method patent, the decision and notices will apply to many different types of technologies. Amazon’s patent dealt with its popular “one-click” online ordering system.[ii]

1. Examination Practice Guidance Respecting Purposive Construction, PN2013-02 (“Notice#1”)

Notice#1 starts with the caveat that purposive construction during “examination of a patent application must take into account the role of the patent examiner and the purpose and context of examination”[iii]. During examination, a patent application is under review and claims may be amended; patent applications (unlike issued patents that have been accepted by an Examiner) are not presumed to be valid. Another significant difference is the fact that courts consider expert evidence filed by opposing sides – an Examiner necessarily considers only the patentee’s side.

Notice#1 instructs Examiners on the step of purposive construction prior to evaluating whether there is patentable subject matter. This is really the only “new” material for Examiners that follows from Amazon. The principle of purposive construction is well established since its acceptance by the 2000 Supreme Court of Canada decisions in Whirlpool and Free World Trust.

Notice#1 refers to the importance of the examiner’s knowledge: “In Amazon FCA it was recognized that, during examination, the necessary foundation of knowledge for performing a purposive construction of the claims is found in submissions from the applicant and the knowledge of an appropriately experienced examiner.” This expertise is necessary when considering the claims in context of the application as a whole.

First – what is claimed?

CIPO re-iterates that, given the well-accepted principles that “a patentable invention is an inventive solution to a practical problem”, the steps for construction involve:

1. identify the problem
2. identify the solution – determine what the inventor has actually in good faith invented, or what the inventor claims to have invented
3. identify the essential element/combination of elements to the solution (not merely superfluous elements)

Notice#1 refers to the overlap of claim construction and “Promise construction” (in a way that the courts have not always explicitly acknowledged) – the problem/solution “identification occurs when construing the promise of the invention (i.e. its utility)”.

Second – is there patentable subject matter?

The Patent Act specifically provides for the types of inventions that may be patentable – basically any products, processes, machines or improvements therein[iv]. At the same time, mere scientific principles and abstract theorems are specifically excluded in the Act.

Notice#1 states that examiners only need identify the problem/solution/essential elements where their purposive construction findings “are relevant to the identification of a perceived defect” (for example on the threshold issue of patentable subject matter).

2. Examination Practice Guidance Respecting Computer-Implemented Inventions, PN2013-03 (“Notice#2”)

Notice #2 is directed at “computer-implemented inventions” which CIPO says “present[] unique challenges”. Notice#2 applies the construction principles of Notice#1 in the specific context of computer related inventions (that are often used in business methods).

Patentable subject matter

In addition to subject matter that is specifically excluded in the Patent Act (mere scientific principles and abstract theorems), courts have interpreted the statutory definition of “invention” to exclude computer programs, artistic works, methods of medical treatment, mere ideas and other inventions that lack “a practical application”.

Notice#2 provides a few central points:

As part of the construction process, the Examiner must determine whether “a claim is defining the whole of the invention, a preferred implementation, or a specific working embodiment”.

Although a patent is not explicitly required to identify the problem and solution, this can be inferred from the context – how the inventors describe the invention, objects, specific problems, needs known or discovered.

Questions to Ask

Examiners should ask:

– is the problem a “computer problem …(i.e. a problem with the operation of a computer)”; this would suggest patentable subject matter that is a combination requiring a computer

• for example is there a problem with a computer chip or component; are there detailed technical descriptions/algorithms
• does the solution overcome computer operation problems – for example with software and hardware
• a computer is essential “Where it appears that the computer cannot be varied or substituted in a claim without making a difference in the way the invention works”

– is the problem not a computer problem (“i.e. a problem whose solution may be implemented using a computer)”

• for example are there no references to computer operational issues; are there minimal technical details
• Examiners must determine if a computer is essential or an “afterthought” – for example is the invention really a mathematical equation that uses a computer merely to expedite

Future developments

The issue of patentable subject matter is timely. On April 15, 2013 the United States Supreme Court heard submissions on whether human genes are patentable products of innovation or unpatentable products of nature. Dr. Watson Crick – one of the discoverers of DNA, opposes gene patenting: “Life’s instructions ought not be controlled by legal monopolies created at the whim of Congress or the courts”[v]. The lower court (minority) found that, as the genes already existed in nature – this was simply “snapping twigs off trees”. Myriad (the patentee) argues that it should be able to patent “anything under the sun that is made by man” and that its work in isolating the human gene is a composition that is the “product of human ingenuity”.

Inevitably, issues of patentable subject matter, particularly in the biotechnology area, engage societal policy issues and often set “grey” boundaries. The Supreme Court of Canada determined in 2002 that one could not patent a higher life form (an altered mouse having cancer genes), however individual cells were patentable (Harvard College v CIPO 2002 SCC 76). Two years later the same court found a patent directed at a modified plant gene was infringed by a farmer who was making the higher life forms (plants) (Monsanto Canada v Schmeiser 2004 SCC 34 at 22-23).

It is important to note that Amazon and the CIPO notices all apply to an Examiner’s review of patent applications. Certainly issuance is a significant first hurdle. It is expected that courts will soon consider these threshold patentability questions in patent infringement/invalidity actions – for example in the area of insurance and financial systems, which should provide further instructions on how to assess patentable subject matter challenges. Canada may soon have its own Myriad case as well.