Canadian Patent Office Issues Guidance To "Cooperate" With Inventors Of Computer-Based Inventions

To be patentable, an invention must meet four main criteria: it must be new, it cannot be obvious, it must be useful and, crucially, it must fall within the definition of “invention” in the Patent Act. The last element can be a sticking point for some types of inventions, particularly those involving computer software (including AI) or business methods. For instance, the Patent Act specifically prohibits patents for “any mere scientific principle or abstract theorem,” and software and business method inventions often are alleged to fall within one of those categories. In 2013, following a decision involving the Amazon.com “1-Click” patent, the Canadian Intellectual Property Office (CIPO) developed guidance for evaluating whether the subject matter of patent applications meets the definition of “invention.” That guidance involved a so-called “problem-solution” approach described in more detail below. In the recent Yves Choueifaty v. Attorney General of Canada decision¹,