• New Examination Guidelines Released In Canada for Computer-Related Subject Matter
  • May 15, 2013 | Authors: R. Allan Brett; Ronald D. Faggetter; Stephen J. Ferance; Stephan P. Georgiev
  • Law Firms: Smart & Biggar/Fetherstonhaugh - Ottawa Office ; Smart & Biggar/Fetherstonhaugh - Toronto Office ; Smart & Biggar/Fetherstonhaugh - Vancouver Office ; Smart & Biggar/Fetherstonhaugh - Montreal Office
  • On March 8, 2013, the Canadian Patent Office released examination guidelines for computer-related subject matter to take into account the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc, 2011 FCA 328.

    The guidelines acknowledge that the Patent Office must assess whether claimed subject matter falls within the definition of an "invention" in the Patent Act and is therefore statutory subject matter based on the essential elements of the claim as determined by a purposive construction of the claim.

    Performing a purposive construction

    The guidelines indicate that a purposive construction of a claim should be performed by considering the specification as a whole and the common general knowledge in the relevant art. The guidelines further state that to perform a purposive construction, an examiner needs to identify the problem the inventors set out to solve and the proposed solution. In this regard, the guidelines note that guidance in identifying the problem and solution should be found in the description.

    The purposive construction identifies the essential elements of a claim. The guidelines caution that not every claim element that has a material effect on the operation of a given embodiment is necessarily essential for the operation of the invention. Some elements of a claim merely define the context or the environment of a specific working embodiment but do not actually change the nature of the solution to the problem. The guidelines also note that the fact that a claim element distinguishes the claimed subject matter from the prior art does not necessarily mean the element will be seen as an essential element of the invention for the purposes of assessing statutory subject matter.

    Determining whether a computer is an essential element of a claim

    Where a claim recites a computer, the following guidance is provided:

    [T]he examiner must carefully consider whether the computer is essential to the solution or if its use is simply a convenience or even an afterthought. For example, if an examiner concludes that the solution to a given problem is to perform certain calculations according to a specific equation, the use of a computer to perform the calculations may expedite the mathematical manipulations without having a material effect on the operation of the equation itself. The examiner could therefore conclude that the computer is not an essential element of the invention. Although it may be inconvenient to do so, the calculations would achieve the same result if done by pen and paper or mentally (i.e. the computer could be varied for another means of calculating without affecting the operation of the invention).

    ...Where it appears that the computer cannot be varied or substituted in a claim without making a difference in the way the invention works or that the computer is required to resolve a practical problem, the computer may be considered an essential element of the claim.

    Determining statutory subject matter

    Once the essential elements of a claim have been identified, an examiner can determine whether the subject matter defined by those elements of the claim comprises statutory subject matter. In this regard, if, for example, the essential elements of the claim are limited to subject matter in the fine arts or subject matter that lacks practical application, the guidelines note the claim will be rejected as not constituting statutory subject matter.


    The issuance of the new guidelines should be a welcome development to applicants for computer-related inventions in Canada as they put an end to the Patent Office's assessment of statutory subject matter based on the "inventive concept." Our detailed analysis of the impact of the new guidelines will follow in the near future.