IP monitor: Patenting computer-implemented inventions (Canada): dynamic GUIs, Intercontinental Exchange Holdings, Inc (Re)

The Patent Appeal Board (Board) recently published a Commissioner of Patents' decision (Commissioner’s decision) relating to software patent applications, in particular, graphical user interfaces. 

The Commissioner’s decision in Intercontinental Exchange Holdings, Inc (Re) refused Canadian patent application 2842636 entitled "System and method for calculating and displaying profitability and a market risk profile for a proposed trade order" (Application), which was directed to a financial technology-related dynamic graphical user interface (GUI). The application was found to be non-patentable under section 2 and subsection 27(8) of the Patent Act. The Commissioner’s decision considered the latest guidance and distinguished from earlier Board decisions.

Legal principles

Software and computer-implemented inventions are patentable in Canada, but it is important to recognize the tension between unpatentable abstract algorithms and inventions that improve the functionality of a computer, or have sufficient “physicality,” among others. For example, the Federal Court of Appeal has noted previously that (emphasis added): "[...] the Commissioner should keep an open mind and not hastily conclude that the subject matter claimed is not patentable simply because it involves the use of conventional computer technology. As always, the determination of patentability is a highly fact specific exercise, and it is impossible to attempt to define the full spectrum of particular circumstances that may exist depending on the nature of a particular invention implemented by computer in these reasons.” 

In this decision, the Board considered the latest guidance under PN2020-04 and distinguished from an earlier decision it made. 

Background 

The claimed subject matter in the Application relates to a method, device and system for receiving live market data, automatically and dynamically re-positioning the locations of the market data indicators relative to the theoretical price indicator, and indicating to the user, through a GUI, the change in profitability of proposed trades caused by fluctuations in the live market data. 

The Application was first received by CIPO in February 2014, more than 10 years prior to the decision. After five rounds of examiner requisitions and responses, the Application was rejected in a final action for lacking patentable subject matter. The applicant disagreed with the assessment and the Application was subsequently forwarded to the Board, which prepared a preliminary review document maintaining the same position. In response, the applicant provided written argument as well as a proposed claim set-1 and, following an oral hearing, a proposed claim set-2.

The cumulative amendments resulting from both sets are shown below. The representative independent claim 1 recites: (changes highlighted in bold)

1. A method for processing a trade order by dynamically displaying live data fluctuations, the method comprising:

generating, by at least one computing device comprising one or more processors executing computer-readable instructions and in communication with an electronic exchange server, a dynamic graphical user interface (GUI) that comprises and graphically displays a theoretical price indicator representative of a theoretical price, one or more market data indicators associated with one or more proposed trades, and one or more data fields prompting data entry;

responsive to said prompting, receiving by the at least one computing device at least one pricing parameter, at least one proposed order quantity and at least one proposed order price via the one or more data fields;

receiving, by the at least one computing device, live market data for at least one type of asset, said live market data being received via one or more constant data streams;

constructing, by the at least one computing device, one or more proposed trades based on the at least one proposed order quantity and the at least one proposed order price;

calculating, by the at least one computing device, a theoretical price based on the received live market data, the at least one pricing parameter, and the proposed order price;

positioning, by the at least one computing device, said theoretical price indicator on said GUI to represent the calculated theoretical price;

positioning, by the at least one computing device, said one or more market data indicators on said GUI, relative to said theoretical price indicator, in an initial relative position to reflect an initial level of profitability or unprofitability of said constructed one or more proposed trades that is determined based on the received live market data;

continuously monitoring, by the at least one computing device, the live market data to identify fluctuations in the live market data;

in response to identifying the fluctuations in the live market data, automatically and dynamically re-positioning the locations of the one or more market data indicators relative to the theoretical price indicator, as said fluctuations occur, to indicate a change in said profitability or unprofitability caused by said fluctuations; and

wherein the GUI is configured to allow a user to select which of the one or more proposed trades will be executed, and

in response to the user’s selection, sending to the electronic exchange server a trade order request to process the trade order based on the selected proposed trade.

The Board's analysis

Does "processing a trade order" satisfy the physicality requirement?

Relying on the proposed amendment to the preamble, the applicant argued the exchange of assets via the processing of a trade order manifests a discernible effect or change in financial markets and thus satisfies the physicality requirement.

However, the Board interpreted the meaning of “physical” literally and held that the “physical” limitation applies to both the existence and discernable effect or change criteria. The Board found that the claimed virtual exchange of assets does not have physical existence or manifest a discernible physical effect or change on the assets per se, and the same deficiency similarly applies to the transfer, manipulation and presentation of abstract financial information or data.

The Board additionally distinguished the application from its prior recommendation in Landmark Graphics Corp (Re) in which simulation calculations and control parameters cooperate with a hydrocarbon production system to effect sufficient physical changes in its operation to satisfy the physicality requirement.

In the context of a system for dynamically displaying live data fluctuations for processing a trade order, the Board found the user inputs to construct proposed trades or to select proposed trades for execution to be generic steps constituting nothing more than generic computer elements being used in a well-known manner.

Does the “GUI” or the user's interaction through the GUI satisfy the physicality requirement?

The applicant submitted that the GUI impacts the physical interaction with the user as it enables/disables trades selectable by the user based on profitability. 

In its recommendation, the Board found the GUI's output to be purely data and therefore abstract in nature. On the user input side, the Board found that the claimed GUI's interactive functions such as zooming and positioning (re-positioning) do not surpass the threshold of generic functionality to satisfy the physicality requirement.

Does the recited set of rules, or the GUI, improve the functionality of the computing device so that said set of rules and the computing device would together form a single actual invention?

The applicant submitted that the proposed claim elements cooperate to process correct trade orders on a single system that dynamically displays live market data and thus all the claimed elements cooperate to form an actual invention that constitutes patentable subject matter.

In response, the Board found no evidence of the algorithm improving the functionality of the computing device. While the execution of the recited particular set of abstract rules could improve the user's decision-making process, the functioning of the computing device itself is not improved, which is a necessary element to form a “single actual invention” as set out in PN2020-04. 

Similarly, regarding the GUI, the Board concluded (emphasis added) that neither the increased amount of information nor the nature of the display configuration addresses the technical limitations of the functionality of commonly known GUIs or the underlying computing devices. Even with the proposed additional language specifying user interaction with the GUI, the claims were found to still fail to include any patentable subject matter. The Board’s reasoning is most clearly articulated at para. 0081 (emphasis added):

The recited set of abstract rules underlying the encompassed GUI configurations does not enhance or improve the data entry functionality, the display functionality or any other technical functionality of the GUI per se. What is arguably improved by the execution of the set of abstract rules is the quality/relevance of the information displayed by the GUI vis-à-vis informing the selection of a trade order by the user. As expressed in the Applicant’s submissions presented above, the claimed subject-matter, including the encompassed GUI configurations, appears intended to address the difficulties for an investor to make correct trading decisions. The issue to be addressed is a consequence of the complexity of the trading market and trading rules, not one of technical shortcomings associated with GUIs.

In conclusion, the Commissioner of Patents concurred with the Board and found the claims (even with the proposed amendments) to be directed to non-patentable subject matter and are therefore non-compliant with section 2 and subsection 27(8) of the Patent Act.

The author would like to thank Daniel Wang, articling student, for his research and significant contributions in preparing this IP monitor.