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Further Discussion of Subject Matter Eligibility by Patent Appeal Board

September 07, 2017

On the heels of its decisions relating to patentability of graphical user interfaces (previously discussed here) from late last year, the Canadian Patent Appeal Board (PAB) has provided further insight on the issue of subject matter eligibility in a pair of new decisions, Decision #1420 and Decision #1422.

In Canada, the Patent Office takes the position that assessment of whether a claim defines statutory (or patentable) subject matter should be based on the “essential elements” of the claim as determined by a purposive construction of the claim. In performing a purposive construction, a patent examiner considers, not only the claim, but the specification as a whole to identify the problem that the inventors set out to solve and the solution proposed in the patent application. In particular, in the context of a computer-implemented invention, if a computer is found to be an essential element of a construed claim, the claimed subject matter is generally accepted as statutory by the Patent Office.

The patent application at issue in Decision #1420 disclosed a call processing system that assigns incoming calls from customers to a human agent. The system assigns an incoming call to a particular agent to process a customer’s request, where the assignment of an agent to the call is based on the particular agent’s “past performance in persuading a customer to change his mind”. In construing the independent claims, the PAB characterized the problem set out in the application as “identifying the best person… to receive a call from a customer”, and struck down the Applicant’s argument that the application related to a “computer problem”. The essential elements of the claimed solution, as interpreted by the PAB, includes assessing whether a customer’s call is important to an organization and, for calls deemed to be important, assigning the call to a particular agent based on the agent’s past performance in persuading a customer to change his mind and choose a course of action that is favorable to the organization. The PAB ultimately rejected the claims as non-statutory, concluding that (1) the claims merely included steps that were determined by business objectives and measurements of human performance, with no essential physical features, and that (2) the features of the claims were analogous to mental processes that could be readily implemented without any computerized system.

Decision #1422 dealt with a patent application which disclosed a method of opening an integrated bank account for a customer in a single session. Independent claim 1 sets forth steps of building a database containing a customer profile, performing a needs analysis based on the collected information, receiving a customer selection of a component for the single integrated account, recommending an account based on the needs analysis, displaying an image of a bank statement, and displaying an updated second image of the bank statement which image is revised to reflect the customer’s selection. The PAB agreed with the Examiner that the application is directed to the problem of requiring customers to repeatedly provide same data when cross-selling new accounts. The solution, as interpreted by the PAB, lies in opening a single integrated account for a customer in a single session, and presenting the user with an image of a bank statement that is revised to reflect the customer’s selection of a component of the single integrated account. After concluding that all of the steps of claim 1 are essential, the PAB noted that the (implicitly recited) computer and database are not essential elements of the claim. In particular, the PAB accepted the Examiner’s argument that the computer and database merely define the operating context or environment for the invention and “are not elements that are material to the solutions to the problems” set out in the application. The PAB ultimately rejected the claims as non-statutory, asserting that the claims as construed relate to a “mere idea, scheme, plan, or set of rules”.

The PAB’s reasoning in Decision #1422 appears somewhat difficult to reconcile with the Patent Office’s practice for determining subject matter eligibility. Despite acknowledging that each of the recited steps of claim 1 are essential, the PAB does not appear to actually engage the question of whether a computer and database are material to the solutions to the problems that are set out in the application. Instead, the decision offers the trivial conclusion that features of the proposed solutions are what provide the solutions to the problems:

[45] …the two solutions identified above are “opening a single integrated account for a customer in a single session” and… “presenting the user a first image of a bank statement, and a second image of a bank statement which is revised to reflect the customer’s selection”. In the Panel’s views, computers, database, etc. do not provide the solutions to the problems, rather the features of a single integrated account opened in a single session avoid the need for a customer to repeatedly provide the same data and to capture the customer’s attention with additional products while they are already engaged in the business of opening an account.

[46] Likewise, for the second solution…, it is the selection of the bank statement motif, however presented, that addresses the need for a user friendly system.

The decision appears to miss out on an opportunity to assess whether a computer and database are indeed essential to the recited steps of claim 1 (i.e. the components of the identified solutions), such as creating a customer profile based on information collected from customers, displaying images of representations of a bank statement, etc. Without such analysis, it is seemingly difficult to conclude that the computer and database are merely part of the operating environment of the invention.

As illustrated by these decisions, the subject matter eligibility of computer-implemented inventions remains a challenging issue for applicants to maneuver around, and further clarification from CIPO and/or case law would be welcome.


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