Patenting computer-related inventions: the Canadian spin

23-02-2016

Ron Faggetter and Neil Padgett

Patenting computer-related inventions: the Canadian spin

Sergey Nivens / Shutterstock.com

Nearly three years has passed since Canada changed its approach to examining the patentability of computer-related inventions, and in that time some clear lessons have been learned, say Ron Faggetter and Neil Padgett of Smart & Biggar/Fetherstonhaugh.

One might wonder whether the bounds of patentable subject matter for computer-related inventions will ever be settled. In Canada, we are fortunate to have recent court decisions that adopt a sensible approach for assessing the patentability of such subject matter.

Unfortunately, however, guidelines developed by the Canadian Intellectual Property Office (CIPO) to implement the judicial approach do not entirely line up with it. Despite this, with the benefit of almost three years’ experience dealing with these guidelines, we can now more reliably predict whether an invention directed to computer-related subject matter can be claimed in a way that will be accepted by CIPO.

Canada’s Patent Act defines “invention” broadly 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”. Limiting this broad definition, however, the actstates that “no patent shall be granted for any mere scientific principle or abstract theorem”. The issue of patentability of computer-implemented inventions centres on the interplay between these two provisions.


Ron Faggetter, Neil Padgett, Smart & Biggar/Fetherstonhaugh, computer-related inventions, patent, CIPO, Amazon.com, Federal Court of Appeal,

WIPR