Notes on recent Canadian patent case law and CIPO practice changes, with a particular eye toward software and computer-implemented inventions.
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.