Notes on recent Canadian patent case law and CIPO practice changes, with a particular eye toward software and computer-implemented inventions.
Since July 20, 2026, patent applicants and owners whose domicile or principal place of business is outside the United States must be represented by a registered patent practitioner when they file most papers with the USPTO. The rule applies to papers received on or after that date, whenever the application was filed. A short list of items is excepted, including inventor oaths and declarations, maintenance fee payments, PCT international-phase documents, and the initial filing needed to secure a filing date. A paper that requires a practitioner's signature and lacks one is not entered in the application file, and an application data sheet without a practitioner's signature is treated as a transmittal letter only, so inventor and priority information may not take effect.
The practical effect falls mainly on individual inventors outside the United States who have been prosecuting their own applications. For Canadian-resident applicants, a Canadian patent agent authorized to appear before the USPTO for Canadian residents can continue to act directly. Neil Teitelbaum is authorized in that way, so for Canadian-resident clients we can file and correspond with the USPTO ourselves, without a US associate. For applicants outside both Canada and the United States, we draft and prosecute the application, with filing and formal USPTO correspondence handled through a US patent agent or attorney, as before. Foreign law firms instructing us on Canadian matters can read more on our foreign associates page.
If you are a Canadian inventor who has been filing at the USPTO on your own, or you are planning a US filing, contact us before your next response deadline so that the representation is in place.
This summary is general information only and is not legal advice. Please check the rule and current USPTO guidance for the requirements that apply to you.
On September 15, 2026, the federal government announced a proposed measure that would let businesses deduct the full cost of most new capital investments in Canada in the year the assets become available for use. The measure is in draft legislation only and may change before it becomes law. Under the draft, patents are among the categories of property excluded from the deduction, along with franchises, goodwill, and certain licences.
That exclusion matters for foreign clients planning a Canadian expansion or acquisition. Budget 2025 had extended immediate expensing to patents under the narrower Super-Deduction, and how that earlier measure interacts with the new one has not been settled. Where a purchase involves both equipment and intangibles such as patents, the allocation of the price between eligible and excluded property can affect the tax result. Those questions belong with Canadian tax counsel; what we can say from the patent side is that the intellectual property should be identified, owned by the right entity, and protected before the investment is made. Ashley's article sets out a practical checklist for foreign associates, written from the trademark side.
Read the full article at Burk Law. This summary is general information only and is not legal or tax advice.
The Federal Court set aside the Commissioner of Patents' refusal of an application directed to a card-game method, including computer-implemented claims. The Court found the Commissioner had made several legal errors: failing to carry out a proper purposive construction of the claims before assessing subject matter, relying on the rejected "actual invention" approach, improperly stripping out the physical and computer-implemented elements, and defining patentable "art" too narrowly.
Although the invention was a card game, the reasoning applies broadly to computer-implemented inventions. For software applicants, the practical message is that eligibility turns on the claims as properly construed, not on an examiner's view of the "actual invention", and that genuine physical or computer-implemented features should not be disregarded. This decision was one of the cases that prompted CIPO's revised subject-matter guidance noted below, and it reinforces that a refusal based on a flawed subject-matter analysis can be appealed to the Federal Court.
Canada's Patent Term Adjustment (PTA) system, introduced to meet Canada's obligations under CUSMA, can grant additional patent term to compensate for unreasonable delays by CIPO in issuing a patent. Delay is measured only against the time the application is in CIPO's hands, generally beyond five years from filing or three years from the request for examination, whichever is later. Applicant-caused delay does not count toward PTA.
In practice, relatively few patents are expected to qualify, given the generous timelines afforded to CIPO and the categories of excluded delay. A request must be filed, with the prescribed fee, within three months of the patent issuing, and no patent granted before December 2, 2025 can be eligible. We review whether PTA is worth pursuing on a case-by-case basis for clients whose patents issue after a lengthy prosecution.
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.