Canadian Federal Court Applies New Test for Patent Subject Matter Eligibility
New Canadian Federal Court decision implements new statutory subject matter evaluation as applied to computer-implemented inventions and medical diagnostics.
The new test outlined by the Federal Court of Canada requires the CIPO to perform a three-step evaluation:
1. Purposively construe the claim.
2. Ask whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem.
3. If the construed claim comprises a practical application, assess the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.
Applicants should consider the following recommendations for their applications in light of the new test. The new standard should increase the potential to patent computer-implemented and medical diagnostic technologies. Accordingly, patent Applicants in Canada should consider:
1. Reviving patent applications abandoned in the last 12 months for subject matter eligibility reasons, citing the new case law.
2. Pending applications facing subject matter eligibility rejections should consider citing the new decision in their response or file re-filing their response to include reference to the recent decision.
3. Applicants with pending claims that were unduly narrowed to avoid subject matter eligibility rejections should consider filing amendments to broaden their claims.
John DeStefano, is a patent and technology technical advisor at Founders Legal. He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology and is pursuing a law degree through UNH Franklin Pierce.