20 www.lexpert.ca
Feature
of applying the new guidelines to comput-
er-implemented inventions, medical diag-
nostic methods and medical uses.
ese new guidelines were set in re-
sponse to August's decision in Choueifaty
v. Canada (Attorney General), 2020 FC
837, which found that the CIPO had erred
in determining the essential elements of
the claimed invention by using the "prob-
lem-solution" approach.
e legal profession now has hope that
it will be easier to obtain patents in Canada
for inventions that are implemented using a
computer, says Wall.
Getting applications patented for com-
puter soware-related inventions is becom-
ing viable again, Manning says, aer a period
of several years during which it was "almost
impossible to get patents for computer so-
ware-related inventions." Although some
patent examiners in the United States
had previously granted as many as a half-
dozen patent applications each month, he
says, that changed with the United States
Supreme Court's 2014 decision in Alice
Corp. v. CLS Bank International, 573 U.S.
208, which held that certain claims about a
computer-implemented, electronic escrow
service for facilitating financial transactions
covered abstract ideas ineligible for patent
protection.
"Finally, we now have some changes in
the law," says Manning. "e courts have
clarified somewhat the tests for getting so-
ware-related applications patented, and the
patent offices have responded by clarifying
their rules in a way that matches that some-
what. And, so, it is much less hopeless today
than it was a couple of years ago to consider
applying for a patent in the computer so-
ware field."
Whether artificial intelligence, i.e., a
computer, can be an inventor for a patent
will vary country by country, says Wall,
but in most countries, including the Unit-
ed States — where the right to a patent is a
constitutional right — it will not be.
"is has been a very strange year be-
cause of our pandemic, but it really shows
that the economy is kind of split in two,"
he adds. Many startup companies, with
funding , "went home, but [these others]
just kept working. And they've been very
busy developing their technolog y, working
remotely [or] in a way that is pandemic
compliant."
Patenting IP
In November, the Canadian Intellectual
Property Office released new guidelines
on patentable subject matter and examples
THREE STEPS FOR
DETERMINING PATENTABLE
SUBJECT MATTER
The Canadian Intellectual Property
Office's new guidelines appear to involve
a three-step process for determining
patentable subject matter:
1. Identify "essential elements" of a claim;
2. Determine an "actual invention" of the
claim; and
3. Determine if the "actual invention" of
the claim has physicality.
Source: Smart & Biggar LLP
