IP Monitor: Patentable subject matter and physicality in computer-implemented inventions

A recent Commissioner of Patent’s decision considered the patentability of a computer-implemented invention. This case has implications in particular for the threshold of physicality required for patentable subject matter. Earlier this year, the topic of patentable subject matter for a computer-implemented invention was addressed by the Federal Court of Appeal in Canada (Attorney General) v Benjamin Moore & Co, so this case builds upon principles established relatively recently.

The claims had been revised several times since filing, and certain claim amendments were clearly directed toward physicality. As a result, the Patent Appeal Board (PAB) considered three different versions of the claims, finding that one of the proposed amendments, Proposal 2, was allowable in view of the current patentable subject matter doctrine.

Introduction

In this case, the patent in issue, Canadian application number 2,634,266, concerned a purchasing system allowing users to purchase gas at a locked-in price in one purchase zone and redeem the purchase later in a redemption zone, which may or may not be different from the purchase zone.

During examination, the patent was ultimately rejected because the original claims were obvious and not directed to patentable subject matter.

PAB proceedings

In PAB proceedings, the applicant further proposed two new sets of claims. The PAB considered the different sets of claims, and for the purposes of this article, the claims on file and the proposed claim set 2 are relevant.

The PAB discussed the relevant legal principles briefly from paragraphs 22-25, most importantly noting the Federal Court of Appeal’s decisions in both Amazon.com, Inc. v Canada (Attorney General) and Benjamin Moore. Notably, the PAB made no explicit mention of PN2020-04 or the relevant sections of MOPOP.

Original Claims

The Commissioner of Patents held that the claims as originally drafted were invalid as they were directed toward non-patentable subject matter. The patentee tried to argue the expression “redeem … a quantity of units of motor fuel” was directed toward the physical step of pumping fuel at a gas station; however the Commissioner of Patents rejected this argument, noting the physical act of pumping fuel was mentioned only once in the description of the patent application, and not at all in the claims themselves.

The Commissioner of Patents also analyzed the original claims for a few other grounds of invalidity, concluding that the original claims were non-obvious, but indefinite. This patent was held to be non-obvious because there were two differences between the claimed embodiment of this patent application and the prior art: (1) a redemption zone price that might be different than the purchase zone price, and (2) based on the price differential between purchase zone and redemption zone, a conversion of the amount of motor fuel purchased such that the price paid is in accordance with the redemption zone price.

Amended Claims

The Commissioner of Patents concluded that the claims as ultimately amended were valid. A few of the changes to claim 1 making it directed toward patentable subject matter can be summarized as follows:

• The patentee added to claim 1: “redeem, by pumping action … at the retail service station”
• The patentee also added to claim 1: “quantity of units of physical motor fuel”

After considering the amended claims, the PAB noted at paragraph 75 that the physicality requirement from Amazon would be met, noting it was its view the claims would be directed to patentable subject matter, and would comply with section 2 and subsection 27(8) of the Patent Act.

Practical notes

This Commissioner of Patent’s decision provides useful guideposts for computer-implemented inventions that interoperate with the physical world or with physical objects. Given this decision, patentees should consider preparing or amending claims that explicitly recite a physical element. In this case, it appears the “redeem, by pumping action” clause was sufficient to satisfy the physicality requirement. From a drafting perspective, it may be worth spending the time to prepare additional description sections or figures to support claim amendments or dependent claims reciting further physical elements.

The author would like to thank Julia Kafato, articling student, for her significant contributions and research in preparing this IP monitor.

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