Posts Tagged: "computer implemented inventions"

Blow to Computer-Implemented Inventions: Canadian Court of Appeal Strikes Down the Subject-Matter Eligibility Test

The Canadian Federal Court of Appeal (FCA), in Attorney General of Canada v. Benjamin Moore & Co. [2023 FCA 168], a 3-0 decision, recently set aside the test on subject matter eligibility of computer-implemented inventions laid down by the Federal Court [2022 FC 923] last year. Acclaimed by patent professionals as a “favorable decision for Canadian applicants who have computer-implemented inventions,” the test had, for the first time, presented a declaratory relief and guidance for examining subject-matter eligibility, particularly for computer-implemented inventions. While the setting aside of the test relays subject matter assessments back to the procedure set by the Commissioner of Patents (Canada), the FCA clarified some key areas associated with the claim construction and patentability analysis.

Canadian Federal Court Sets a New Subject-Matter Eligibility Test for Computer-Implemented Inventions

Clearing the air on labyrinthine subject-matter eligibility standards for computer-implemented inventions (CIIs), a Canadian Federal Court last month revisited the issue in Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923. In its decision, the court, while setting a new test, rejected, for the second time, a problem-solution approach to claim construction followed by the Canadian Intellectual Property Office (CIPO) in examining patent applications. The appeal was filed against decisions by the Canadian Commissioner of Patents finding two Canadian Patent Applicants numbered 2,695,130 and 2,695,146 as patent ineligible under sections 2 and 27(8) of the Canadian Patent Act. Intellectual Property Institute of Canada (“IPIC”), an IP policy advocacy organization, intervened in the appeal proceedings, affirming that the appeal raised a fundamental question of Canadian Patent Law.

Patenting Simulations at the EPO: Decision G1/19 and Its Consequences for Computer-Implemented Inventions

The Enlarged Board of Appeal of the European Patent Office (EPO) recently published its decision No. G1/19 on patentability of simulations. There was great anticipation for such a decision, after landmark decisions 641/00 (COMVIK) and G3/08, mainly due to the ambiguous formulations of the questions of law to the Enlarged Board of Appeal. The result is “business as usual”, but several clarifications might be useful in the future. In the following, we first summarize the questions of law, the clarifications of the Enlarged Board of Appeal and then infer possible consequences for applicants and practitioners.

What to Know About the European Patent Office 2021 Guidelines for Examination: Part I – CII and Procedural Changes

The European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1.

The trend towards an accurate and detailed explanation of substantive and formal requirements is maintained, keeping up to speed with the recent case law. The changes are limited but helpful, and this witnesses the effort by the EPO in past years to arrive at a stable text of the Guidelines, particularly concerning the software and biotech patentability sections.

Update on 101 Rejections at the USPTO: Prospects for Computer-Related Applications Continue to Improve Post-Guidance

The Supreme Court’s 2014 decision in Alice v. CLS Bank made it significantly more difficult to obtain patents for some computer-related technologies. it is, at best, questionable whether court decisions since then have been coherent and consistent. Similarly, marked variation has been observed across art units and across post-Alice time periods as to how examiners are applying Section 101. However, the U.S. Patent and Trademark Office’s (USPTO’s) 2019 Patent Eligibility Guidance added some much-needed clarity and predictability as to how eligibility of computer-related patent applications is being assessed at the agency. Our previous research focused on the effect that Alice and Electric Power Group had on examination trends in computer-related art units. To investigate how the new 2019 USPTO eligibility guidance has affected those trends, we updated our analysis.