Notes on recent Canadian patent case law and CIPO practice changes, with a particular eye toward software and computer-implemented inventions.
The Supreme Court's decision keeps patentable subject matter, novelty, obviousness, and utility as separate, independently assessed questions rather than folding them into a single blended inquiry. For applicants prosecuting computer-implemented inventions, the practical takeaway is that subject-matter eligibility should not be used to import novelty or obviousness objections through the back door. Each requirement has to be met on its own terms.
We expect this decision to shape how examiners and the Patent Appeal Board approach software-related applications going forward, and we're watching closely for how it interacts with CIPO's own updated guidance below.
CIPO has replaced its 2020 approach, built around identifying an application's "actual invention", with a revised framework that folds subject-matter assessment directly into purposive claim construction, removing the separate inquiry entirely. For software and computer-implemented invention applicants specifically, this is a meaningful shift in how claims will be assessed at examination.
In our view, this opens up claiming strategies that were harder to defend under the old test, though how consistently it will be applied by individual examiners remains to be seen. We'll be drafting with this framework in mind for new software applications going forward.
The Federal Court of Appeal addressed claim construction and obviousness-type double patenting in the same decision, providing guidance relevant to any applicant managing a family of related patents rather than a single filing. Worth a look for clients building out a patent portfolio around one core invention over time.