Computer-implemented inventions continue to face challenges to patent protection in Canada as illustrated in two recent Patent Appeal Board (PAB) decisions discussed here.

1. PAB 1407 re Canadian Patent Application No. 2,798,566

The 566 Application describes a computer-implemented method entitled “Identified Customer Reporting” which identifies the number of unique customers who have made purchases from a retail store and applies these data sets to other customer transactions to create a weighting classification for reporting purposes.

The PAB applied the Manual of Patent Office Procedures (MOPOP) Guidelines and specific direction from PN 2013-03 for computer-implemented inventions. In accordance with the MOPOP, the first step of purposive claim construction is to identify the person skilled in the art and the relevant common general knowledge (CGK). The next step is to identify the problem addressed by the inventors and the solution put forth in the application. Essential elements can then be identified as those required to achieve the disclosed solution as claimed (the problem-solution approach).

The PAB found that the skilled person would determine that the problem to be solved relates to the “accuracy of the data being used in the final report and not to any limitation of the computer system which may be used to generate the final report.” The solution filters unwanted data and applies a weighting classification. While the claims recite several computational steps to perform these functions, the PAB did not find that the use of a computing device would be essential. The PAB hence refused the application.

2. PAB 1408 re Canadian Patent Application No. 2,163,768

The 768 Application concerns software which manages risk relating to specified, yet unknown, future events, designed for the financial services industry. The PAB again applied the problem-solution approach to claim construction.

The PAB defined the problem as relating to enabling risk management for specified, yet unknown, future events; the solution identified as “the scheme of formulating multi-party risk management contracts”. The PAB found that the computer system only defines the “operating environment of the conventional ordering system” and is not essential to the solution. The PAB therefore refused the application.

Summary By: Jennifer R. Davidson

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