The Commissioner of Patents of the Canadian Intellectual Property Office ("CIPO") recently released its decision in
Claim 1 of the '728 application was representative, and read, in part, "A method of operating a diagnostic device comprising an analyte measurement module, the method comprising: causing the analyte measurement module to measure analyte responses in at least one physical reference sample and in a plurality of physical patient samples in a ratio according to a quality control utilization rate of a candidate quality control rule, wherein the candidate quality control rule is selected from a set of candidate quality control rules according to a method comprising: ..." (followed by a series of computer-implemented steps for selecting the candidate quality control rule).
Despite having deemed all elements of claim 1 essential, the Commissioner, relying on CIPO's Practice Notice PN2020-04, noted that "the mere fact that a computer is among the essential elements of the claimed invention does not necessarily mean that the claimed invention is patentable subject-matter. ... A computer programmed to merely process the algorithm in a well-known manner without solving any problem in the functioning of the computer will not make it patentable subject-matter because the computer and the algorithm do not form part of a single actual invention that solves a problem related to the manual or productive arts" while "having physical existence or causing a discernible physical effect or change." (Decision, paras. [18] and 29], emphasis added)
Putting aside the issues inherent in limiting the analysis to an "actual invention" that is somehow different from the essential elements of the claims, or the overly narrow standard of a discernible physical effect or change (the case law requiring a discernable effect or change), or the use of a problem/solution analysis despite the Federal Court having recently discredited it (see Choueifaty v. Canada (Attorney General), 2020 FC 837 at para. [37]), the Decision yields helpful tips for addressing subject-matter objections pertaining to certain types of computer-implemented inventions involving inputs to, or outputs from, an algorithm.
In particular, the Decision highlights the importance of tying a measurement device or input to an algorithm, or the algorithm to an output used for downstream testing, so as to form a single actual invention that solves a problem related to the manual or productive arts, and which comprises a physical existence or causes a discernible physical effect or change. For example, with respect to claim 1, the Commissioner stated that "claim 1 recites the elements "an analyte measurement module" and "causing the analyte measurement module to measure...", [which] are physical and cause a discernible physical effect (measurements are physically made by a physical device)." (Decision, para. [30]) The Commissioner's view was that "the skilled person would see the actual invention as the analyte measurement module cooperating with the computer to take measurements, [and] provide the measured results to the computer to calculate an optimum quality control interval size according to an algorithm." (Decision, para. [30]) The Commissioner thus considered the actual invention of claim 1 to have physicality and to therefore comprise statutory subject-matter.
With respect to claim 55, the Commissioner stated that "Dependent claim 55 positively recites using the output information to physically carry out testing of samples. This element cooperates with the algorithm and computer to provide a discernible effect and the testing driven by the algorithmic output is part of the actual invention of this claim." (Decision, para. [30], emphasis added) For reference, dependent claim 55 had recited "testing the number of reference samples specified by the quality control strategy between testing samples as specified by the quality control interval size of the quality control strategy." (Emphasis added)
The Decision also highlights the pitfalls of passively reciting physical claim elements. In particular, the Commissioner expressed that "Independent claims 27, 37, 38, 45, 54 and 63 are different in that they do not recite an analyte measurement module or making measurements. ... The understanding that the input data came from measurements using an analyte measurement module or that the output data is to be used to guide measurements is of intellectual significance only. To have physicality, actual testing or an analyte testing module would have to be positively recited in the claims." (Decision, para. [30], emphasis added) According to the Commissioner, it would not be enough to actively recite the computer, for executing the algorithm, as the only physical element, as this would be indistinguishable from
Illustrative of how to remedy such issues, for example, the Commissioner remarked that the Applicant's amendments to claim 27, in its second proposed claim set (submitted on
The Commissioner, therefore, recommended that the Applicant be notified that replacement of the claims on file with the Second Claim Set would be required to secure an allowance.
Takeaways
The Decision is noteworthy for those seeking patent protection for computer-implemented inventions in
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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