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New Patent Appeal Board decisions shine light on CIPO’s application of Choueifaty to patentable subject matter rejections

May 19, 2021

The Canadian Patent Appeal Board (PAB) has now started releasing Commissioner’s Decisions rendered since the Federal Court’s decision in Choueifaty v. Canada (AG), 2020 FC 837, and since the Office issued its resultant practice notice PN2020-04 on patentable subject matter. The new Decisions provide an instructive look at what types of claims to computer-implemented inventions will be considered patent eligible.

In Re Landmark Graphics Corporation, 2021 CACP 9, the PAB considered a computer-implemented method of calculating simulated models of petroleum wells based on a series of possible design parameters and economic inputs. Models are calculated based on “acquiring” a planning variable via an input device and various assembling, executing, selecting, and storing steps, all of which are entirely based in software.

The claim includes a final step of “using the data from the simulation engines in a well perforation and completion process”. That final step was considered by the PAB to be the key addition to the ‘actual invention’ that converted the method form a purely intellectual exercise to one that produces improved well production results. On that basis, the PAB determined that the claims produced “discernable physical effects”, and that they are therefore directed to patentable subject matter.

In a similar vein, Re ExxonMobil Upstream Research Company, 2021 CACP 12, involved a computer-implemented method of improving stability and efficiency of computer simulation of multiphase flow in connection with hydrocarbon reservoirs. The simulations are purely mathematical models of flow patterns in the geology of the reservoir. They are useful in optimizing eventual hydrocarbon production from the reservoir.

The claims involve a number of calculating, updating and performing operations all of which relate to generating the simulations. The final operations of the method in claim 1 include “outputting a solution” and, significantly, “causing a well to be drilled at a location based on the solution for producing hydrocarbons”. The latter operation was key to the PAB finding that the ‘actual invention’ in the claim “manifests a discernable effect or change” and is therefore proper subject matter.

Most interestingly, the PAB also found claim 15 was directed to patentable subject matter although its final step recites “output simulation results from the simulation based on the SI formulation method for the reservoir that performs an auxiliary time-stepping procedure, for use to cause a well to be drilled at a location based on the simulation results for producing hydrocarbons”. This operation merely recites outputting the simulation results. Despite the lack of an active step of well drilling, the PAB was persuaded that the recited “…for use to cause a well to be drilled…” was sufficient noting that, “this constitutes the same type of cooperation between the simulation algorithm steps and the physical well-drilling as that of the other independent claims.”

Finally, Re Mallinckrodt Hospital Products IP Limited, 2021 CACP 6, is instructive although it relates to a method of medical diagnostics. The claimed method relates to reducing risk of administering nitric oxide to a pediatric patient in a certain age range. It involves a number of “identifying” and “determining” steps with respect to whether the patient has certain conditions or diagnoses before determining a treatment protocol involving nitric oxide. The identifying and determining steps were acknowledged to be simply reading a patient’s record. Most of the claims were rejected as being directed to non-patentable subject matter on the basis that the data acquisition from a patient record was a disembodied step, as was the correlation operation, and the production of a treatment protocol was not part of the ‘actual invention’.

However, the PAB did find that some of the claims, like claims 4 and 5, were directed to patentable subject matter. Claim 4 differs from the rejected method claims in that it recites an initial operation of “performing echocardiography to identify if the patient has pulmonary hypertension”. The fact that the claims recite a data acquisition operation that specified performing echocardiography was sufficient to convert the claim to patentable subject-matter.

The take away from these three decisions appears to be that the PAB will consider a computer-implemented claim patentable subject matter if there is a concrete data acquisition operation that is sufficiently specific as to its manner of physical acquisition or if there is an “apply the results” operation that has a discernable effect, such as using the resultant data to dig a well. It also appears that the PAB may be open to considering “output the results” as sufficient if the claim language recites a “use” for the results that, if applied, would have a discernable effect.

It remains to be seen how insistent the PAB will be on the results being applied in a physical sense, such as petroleum well construction, in order to find that the claims “manifest a discernable effect or change”. In many inventions, the results generated through computer manipulations are used for further operations within the computing environment (e.g. rendering a GUI, compressing data, performing decryption, etc.) rather than to carry out an act of physical construction.