Summary of CIPO’s Post-Amazon Examination Practice on Computer-Implemented Inventions

Summary of CIPO’s Post-Amazon Examination Practice on Computer-Implemented Inventions

Examination Practice Respecting
Computer-Implemented Inventions

These guidelines build upon the guidance in Chapter 16
(Computer-Implemented Inventions) of the MOPOP and in PN 2013-02 (Examination
Practice Respecting Purposive Construction).

Caution must be exercised when relying on the guidance in sections
16.02, 16.03, and 16.09 of the MOPOP. Where the guidance invokes the
"contribution" of a claim or mandates a "technological solution
to a technological problem" as part of a test to ensure that the invention
is within a "field of technology", it is describing these concepts in
relation to practices that are no longer in use.

A) Subject-matter

In applying the guidance in the MOPOP, examiners must take into account
the Patent Notice on Practice Guidance Following the Amazon FCA Decision
[March 2013] to the effect that the evaluation of the subject-matter of a claim
for compliance with section 2 of the Patent Act is to be made on the
basis of the essential elements as determined through a purposive construction
(see part B below).

Where a computer is found to be an essential element of a construed
claim, the claimed subject-matter will generally be statutory. A good indicator
that a claim is directed to statutory subject-matter is that it provides a
technical solution to a technical problem.

B) Claim analysis

PN 2013-02 (Examination Practice Respecting Purposive Construction)
mandates the use of purposive construction in place of other approaches to
claim analysis. In particular, the "contribution approach" set out in
MOPOP Chapter 13 is not to be used.

Identifying the problem

Identification of the problem and its solution may be an integrated
exercise, i.e. the manner in which the solution is described can help inform
the problem, and vice versa. Where the applicant is explicit as to the nature
of the problem, examination should generally proceed accordingly unless doing
so would be unreasonable on an informed reading of the application in light of
the common general knowledge.

The examiner will give consideration to what the inventors state about
the background of the invention, their objectives ("objects of the
invention"), any specific problems, needs, limitations or disadvantages
known in the art or discovered by the inventors, etc. in identifying the
problem faced by the inventors.

In certain cases, a key point may be determining whether or not the
problem faced by the inventor was a "computer problem" (i.e. a
problem with the operation of a computer) as opposed to not being a
"computer problem" (i.e. a problem whose solution may be implemented
using a computer).

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.

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
  • 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.

Identifying the solution

Where the problem was not a "computer problem" per se, the
examiner must carefully consider whether the computer is essential to the
solution or if its use is simply a convenience or even an afterthought.

In some cases, the description may emphasize a solution that has been
described in conceptual terms. Examiners must consider whether the claim
defines a specific solution or simply the idea or concept of solving the
problem. A lack of detail regarding implementation may point to a claim being
merely the idea to use a computer to carry out certain operations where, in
view of the specification as a whole, the claimed elements do not appear to
define a specific manner of operating the solution.

Completing the construction of the claims

Having identified the problem and solution, the construction of the
claims involves interpreting the meaning of the various terms used therein as
well as determining whether elements in the claims are essential or

Where it appears that the computer cannot be varied or substituted in a
claim without making a difference in the way the invention works or that the
computer is required to resolve a practical problem, the computer may be
considered an essential element of the claim.