New guidance re computer-implemented inventions

The Canadian Patent Office today announced a new MOPOP chapter for computer-implemented inventions. A public consultation on the Office’s proposal closed in August, and yielded three responses - the author contributed to IPIC’s 39-page response.

Very few changes were made in response to the consultation. These changes:

  • clarify that pseudocode, with accompanying description, can be used as an alternative to flowcharts;
  • delete certain commentary regarding “essential elements” of a claim; and
  • clarify that system claims usually refer to machines.

This final version of the chapter, like the pre-consultation version, borrows concepts and terms from foreign jurisdictions, i.e. problem/solution approach and inventive step developed in Europe.

Interestingly, during the consultation, the US Supreme Court handed down the landmark Bilski opinion (holding that the machine-or-transformation test is not the only test for patent eligible subject matter) but this did not seem to find its way into the Canadian chapter.

The Office had been urged by some stakeholders to wait for Justice Phelan’s forthcoming decision in the Amazon 1-click appeal. This decision has been under reserve since the hearing on April 20, 2010. Should the Court re-write the legal foundation for the guidance, the Office’s new guidance on computer inventions may become obsolete very soon.