11 Aug 2020
What is the current state of the law on the patentability of CIIs?

CIIs are patent-eligible if the claims fall into one of the enumerated categories found in the Canadian Patent Act’s definition of invention, namely: any new and useful art, process, machine, manufacture or composition of matter, or any new or useful improvement of the same.1 They cannot be directed to mere scientific principles or abstract theorems.

There is no prohibition against software or computer-implemented patents per se; however, the courts and the patent office have used Canada’s purposive claim construction approach to discern whether claimed computer elements are essential, or whether they are non-essential and the claim is directed to a mere scientific principle or abstract theorem.

The leading Canadian case on patent-eligible subject matter of CIIs is a 2011 Federal Court of Appeal decision on the patentability of’s “1-Click” e-commerce system.2 In this decision, Amazon was successful in appealing the Commissioner of Patents refusal of Amazon’s patent application for want of patent-eligible subject matter. In its analysis, the Court noted that “… patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change”. Considering whether subject matter is patentable “… requires the Commissioner’s [Patent Examiner’s] identification of the actual invention to be grounded in a purposive construction of the patent claims. It cannot be determined solely on the basis of a literal reading of the patent claims, or a determination of the “substance of the invention.” 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.”

Following the decision, the Canadian Intellectual Property Office updated its examination practices, and has taken the position that a patentable invention is an inventive solution to a practical problem and that identification of the problem and the solution provided by the invention forms the purposive construction of the claims. Where an identified problem does not require a technical solution or is not a “computer problem” per se, patent examiners dismiss computer elements as non-essential arguing they merely provide context or a convenient or conventional operating environment. Construing the claims without the computer elements inevitably results in a finding of lack of statutory subject matter.

CIIs, even those which involve business methods or mathematical formula, may be patentable if framed properly. Patent applications and submissions during examination should be prepared with an eye to technical solutions and computer-specific challenges underlying the implementation of a business method or abstract theorem. While the nuances of purposive construction and the essentiality of computer elements are unique to Canada, parallels may be drawn to effective strategies in other jurisdictions such as those addressing technical effect before the European Patent Office, or prongs of the U.S. Alice test.

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David Ng
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Stephen Lam
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