CIPO has issued practice guidance to patent examiners on patentable subject matter (PN2013-02) and the examination of computer-implemented inventions (PN2013-03) following the November 2011 decision in Canada (Attorney General) v. Amazon.com Inc. 2011 FCA 328.
The guidance sets out purposive claim construction for use by Examiners that includes identifying the problem and solution based on the description and not by references to the prior art. The guidance also describes how to determine which elements of the claim solve the identified problems and which are superfluous elements.
For computer implemented inventions, the guidance includes factors which may assist Examiners determine whether the claims are directed to a “computer problem” or to a problem that is not a “computer problem”.
Factors that may indicate the existence of a “computer problem” include:
- the description details a specific problem with the operation of a computer;
- the solution to the problem involves controlling a chip, system component or technical architecture element such as through firmware (embedded software);
- the description emphasizes challenges or deficiencies in prior computers;
- a significant level of detail is devoted to describing technical details, such as the algorithm or logic performed by the computer.9
Factors that may suggest that the problem was not a “computer problem” include:
- explicit statements in the description suggesting a problem other than a “computer problem”;
- the absence of any explicit indication in the application that any practical problems relating to the operation of a computer were overcome;
- a relative absence of technical details, despite an indication in the description that the solution be implemented on a computer.
The guidelines issued today come after a series of consultations with stakeholders throughout 2012 (see my earlier post on the comments received in May 2012). I expect that CIPO will release further guidance on examining diagnostic methods because the earlier consultations covered both computer related inventions and diagnostic methods.
Today’s guidance is effective immediately.