Senior, Rodney (Re), 2023 CACP 23

Hot on the heels of the recent Benjamin Moore appeal decision, Canada’s Patent Appeal Board (the “Board”) recently considered the patentability of a computer-implemented invention. Despite the initial rejection by the patent examiner, the applicant argued that his system for purchasing motor fuel had a practical application and submitted two new sets of proposed claims. While the Board agreed that the original claims were unpatentable, the amendments were found sufficient to meet the physicality requirement for subject matter.

Background

Canadian Patent Application No. 2,634,266 entitled “Electronic Quantity Purchasing System” was related to an electronic quantity purchasing system. Users were able to use the system to purchase a set amount of motor fuel at a locked-in price at the point and time of purchase. This amount would be added as credit in a “reserve account” which could be redeemed in the future, at a point of distribution that may or may not be different from where the user first made the purchase. Users could also transfer some or all of their reserve credit to another user’s account.

The application was initially rejected by the patent examiner for obviousness and lack of patentable subject matter. The applicant appealed, arguing that the invention had a practical application and that the claimed subject matter included physical aspects and components contributing to the physicality of the invention. As part of the appeal process, the applicant submitted new sets of proposed claims.

Patentable Subject Matter

As previously reported, the Federal Court of Canada in Benjamin Moore had struck down CIPO’s use of the “problem-solution” approach for assessing whether a computer-implemented invention is patentable subject matter and instructed the Commissioner to adopt the following test:

1. Purposively construe the claim;
2. Ask whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem; and
3. If the construed claim comprises a practical application, assess the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.

The Federal Court of Appeal then released its appeal decision and found this test contrary to Amazon, remitting the case back to the Commissioner. While the Federal Court of Appeal declined to offer any further clarity on the patentability of computer-implemented inventions, it did confirm that the binding authority for patentable subject matter remains the test from Canada (Attorney General) v. Amazon.com, which states:

[66] …because a patent cannot be granted for an abstract idea, it is implicit in the definition of “invention” that patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change.

[69] However, if it is meant to suggest that this “physicality requirement” can be met merely by the fact that the claimed invention has a practical application, then I do not agree.

Patent Appeal Board Decision

The Patent Appeal Board first considered the original claims on file and drew parallels to the case of Schlumberger, where the patent was related to a method of collecting, recording, and analyzing seismic data using a computer programmed according to a mathematical formula”. In Schlumberger, the only novel aspect of the invention was the mathematical formula, which could not be the subject of a patent. Although a physical tool (a computer) was used to give the mathematical formula a practical application, this was not enough to save the claims.

Similarly in this case, the Patent Appeal Board found that original claims of the ‘266 Patent did not meet the physicality requirement. There was no suggestion in the specification of the patent that the claimed computer elements (i.e., the database, web server, client computer, point of sale equipment) represented anything other than “typical components of a computer”, or that they performed operations beyond those of a computer.

The applicant argued that “redeeming” a quantity of motor fuel would be understood to mean dispensing a quantity of physical fuel at a gas station, drawing on the user’s reserve account. The Patent Appeal Board rejected this argument, finding that the description of the patent only mentioned pumping of fuel once, and failed to disclose any details regarding retail service stations. As a result, based on the disclosure of the application, a skilled person would not construe the expression “redeeming fuel” to mean physically pumping fuel at a gas station.

The Patent Appeal Board then considered the two new proposed claim sets submitted by the applicant. One of the claim sets added the following limitations to claim 1:

• “Redeem, by pumping action … at the retail service station”
• Quantity of units of physical motor fuel

These amendments specified that the claimed method to redeem a portion of the balance was by pumping fuel at the service station. Considering the amended claims, the Patent Appeal Board concluded that they would meet the physicality requirement and would therefore be directed at patentable subject matter.

Christina is a PCK shareholder who joined PCK in 2014 shortly after graduating from the University of Waterloo, where she studied math and chemistry.

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