This article was written in affiliation with Madelaine’s placement at ventureLAB and .

This series provides an in-depth look at different types of intellectual property. As a founder, once you’ve determined what types of Intellectual Property (IP) you need to protect, it’s important to understand the details and requirements of each. A concrete understanding of each type of IP not only allows you to recognize what you may be able to protect, but will also help you to take full advantage of the right. 

‍This article is the second in a 5-part series. ventureLAB’s experts cover everything you need to know when filing for IP protection. Over the next six weeks, we’ll release articles on the following topics.  to be the first to know when we release an article. 

• Part 2: A Beginner’s Guide to Patenting Software and Artificial Intelligence
• Part 3: Use It or Lose It: How to Acquire and Protect your Trademarks
• Part 4: Don’t You Forget About Me: Protecting Your Company’s Copyrights 
• Part 5: The IP Hidden Gems: Trade Secrets and Industrial Designs

Patenting software, and inventions related to Artificial Intelligence (AI) and machine learning, known as computer-implemented inventions (CII) in patent lingo, is a complicated and evolving area. The difficulty lies in overcoming Patent Office objections related to subject matter eligibility, which prohibits the patenting of abstract concepts and mathematical formulae (for more on this, see ).��

CII, such as algorithms, are frequently deemed an abstract idea, and thus not suitable for patent protection. In order to overcome this obstacle the patent application must explain how the algorithm and the computer are interconnected such that together they form a single invention. To do this, the computer must be deemed an essential element of the invention.

This has been a historically tumultuous area of patent law. The 1981 Canadian Schlumberger case was the first to set out the rule that the use of a computer merely to automate calculations that could otherwise be done by hand is not patentable. This is because the inventive aspect is the calculation itself, not the combination of the calculation and computer. In 2011,  was successful in obtaining a patent on their ‘one-click’ method. This was a controversial decision since not only was it a CII, but it was also considered to be a “business method”, which is notoriously difficult to patent in Canada.

Most recently, in 2020 the Canadian Federal Court decided the case , which initiated a huge change in the way the patent office evaluates the essential elements that make up an invention. This resulted in the Canadian Intellectual Property Office releasing  on how patent examiners should approach patentable subject matter, particularly for CII. 

Before this decision, patenting was particularly difficult for CII because patent examiners would frequently determine the computer itself was not an essential element of the invention. As a result, what remained was an abstract idea (i.e. the software or algorithm itself) which had no physical substance and was thus deemed unpatentable. 

Now, all elements of an invention are presumed to be essential. Thus, if you include a computer in the claims, it will be assessed as if that computer is essential to the functioning of the invention. This is great news for inventors, since it reduces the likelihood that your CII will be automatically deemed unpatentable. 

Unfortunately, the challenges do not stop here. Having a computer viewed as an essential element of the invention is only the first step in patenting software. Next the patent examiner will look at whether the computer works together with the other essential elements of the invention. Together, the computer and the other elements must form an actual invention that has physicality. This physicality can be physical existence, or the invention can produce a physical effect or change.

The mere use of a computer in a well-known manner, such as to execute the code, will not be sufficient to render the invention patentable. This is because any computer could do that job, and the computer is simply a means to execute the algorithm, which on its own is an abstract theorem or disembodied idea. However, if in processing the algorithm the function of the computer itself is improved, this could be considered a physical effect and thus a unified invention.

In the US the test for patentability is different, but ultimately the outcome is similar. You cannot obtain a patent on a purely abstract idea and merely using a computer in a generic way will not be enough to overcome this hurdle. 

In Europe, the patent office takes a slightly different approach. It is relatively easy to overcome the subject matter barrier as the “any hardware” approach means that simply including a computer in the claim is a first step towards satisfying patentability. However, the patent office also requires a technological solution to a technological problem, which looks only at the technical features that contribute to the solution. Unlike Canada which now presumes most, if not all, elements are essential, a non-technical feature which doesn’t interact with the technical subject matter is essentially ignored. 

Patenting software is a very challenging field. The summary above is a very basic introduction to the field. It is best to seek the advice of a patent professional who can advise on the specific needs of your invention and adapt it for each jurisdiction. A patent professional will consider how your invention integrates the use of a computer, and how the computer and algorithm cooperate to produce a physical effect.

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The patent application at issue concerned a computer-implemented method for weighing investment portfolio assets. The application was initially rejected because the essential elements were said to fall outside of the definition of “invention”. Section 2 of the defines an invention as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. Defining a computer-implemented invention as a "machine" or "process" is controversial because, under section 27(8) of the , mere scientific theorems or abstract principles are not patentable. This results in a somewhat grey area in software, where an algorithm itself may not qualify, but its computers and hardware can be both a machine and a process. This by Andrew Currier and Stephen Perry provides interesting insights on the challenges in construing software claims.

To assess a claim’s essential elements, section 12.02.02e of suggests a problem-solution approach. Here, the essential elements of a claim are those which are necessary to achieve the disclosed solution to an identified problem. In Choueifaty, the Federal Court opined that the Commissioner was incorrect to use the problem-solution approach for construing claims, but instead should have used the purposive construction test set out in and (at para 38).

When determining whether an element is essential, the purposive construction test requires the examiner to ask the following questions:

“(1) Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.

(2) Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.”

Indeed, in response to Choueifaty, the Canadian Intellectual Property Office (CIPO) released on the subject matter of claims related to computer-implemented inventions, medical diagnostic methods, and medical uses. In doing so, they confirmed that the Commissioner should use purposive construction, not the problem-solution approach, to construe claims. Furthermore, CIPO clarified that when a computer is identified as an "essential element", the subject-matter is not automatically patentable. The Commissioner must consider whether (1) the computer cooperates with the other elements as a single invention and (2) the invention has physical existence. A computer used in a well-known manner will not suffice to allow its scientific principles or abstract theorems to be patentable as a single invention. To qualify, the algorithm must improve the computer’s function.

CIPO included of patentable subject-matter under the new guidelines, such as a computer algorithm which analyses seismic measurements. This added performance discerns a physical effect which renders the claim to the algorithm, in cooperation with the computer’s other elements, patentable. However, a hypothetical computer-implemented method which merely receives, processes, and displays seismic measurements is not patentable because the disclosure focuses only on the algorithm (input/output), which neither has a physical existence nor causes any physical changes.

Beyond the scope of Choueifaty, CIPO clarified that when determining the patentability of medical diagnostic methods, all elements in a medical diagnostic claim are presumed essential unless established otherwise. As points out, the previous approach would exclude the “elements of measuring or detecting the genetic alteration or analyte, finding those elements to be inessential.” According to , using this [incorrect] approach, the correlation between the analyte and the disease was considered an abstract idea. As a result, this correlation would fail to receive patent protection. Under the new guidelines, the abstract idea combined with the other elements of the claim (i.e. measurement or detection) make up a single invention. In the provided, a method for diagnosing the risk for developing cancer, measuring the analyte X, and comparing it to a reference sample is patentable. However, a method which includes comparing a report summarizing the levels of X to a reference sample would not be patentable. Thus, a successful claim depends on the physicality of the measurement step.  

Lastly, CIPO clarified that “medical uses” excludes inventions which require the exercise of professional skill and judgement. This is consistent with the established rule that medical treatments and surgery are not patentable. For example, a compound X to treat peptic ulcers is patentable, but a titration regime which requires a medical professional to monitor their patient is not.

����ʰ�’s response to Choueifaty provides long awaited clarity for construing the essential elements of patent claims. Although Choueifaty did not concern medical diagnostic methods, the guidelines that require patentable subject matter to include a detection and measurement element have ushered in a new era of opportunity for medical innovation.

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is an IPilogue Contributing Editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

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