2022 Patent Appeal Board Statistics
March 01, 2023
There has been a reduction in the number of computer-implemented inventions reviewed by Canadian Patent Appeal Board (“PAB”) as revealed in the 2022 statistics. Despite the reduction, recent court developments have likely increased the overall patentability of computer-implemented invention in Canada.
In Canada, prosecution of a patent application can continue until an Examiner allows the application or has reasonable grounds to believe that the Applicant will not overcome one or more objections to the application. In the event that the Examiner has reasonable grounds to believe that the Applicant will not overcome one or more objections to the application, the Examiner may reject the application in a Final Action.
A rejected application is reviewed by the Commissioner of Patents who renders a “Commissioner’s Decision”. In practice, this function is delegated to the PAB. The PAB may ultimately recommend that the Commissioner allow the application, refuse the application, or send the application back for further prosecution. The PAB recommends sending the application back for further prosecution if the PAB believes there are changes, such as proposed alternate claims, that would put the application in condition for allowance.
2022 PAB Decisions
In 2022, the Canadian patent office issued a total of 26 PAB decisions. Of the 26 decisions, 5 applications were allowed, 18 applications were refused, and 3 applications were sent back for further prosecution.
Patentable Subject Matter
In 2022, 13 of the 26 applications reviewed by the PAB included one or more patentable subject matter objections. Of these 13 applications, only 1 application was allowed, 9 applications were refused, and 3 were sent back for further prosecution.
Patentable Subject Matter – Computer Technology
Of the patentable subject matter objections, the most common objections reviewed by the PAB were subject matter objections relating to computer technology. In total, 8 of the 13 subject matter objections in applications reviewed by the PAB related to computer technology. Of these 8 applications, 1 application was allowed and 7 applications were refused. None of the applications reviewed by the PAB related to computer technology were sent back for prosecution.
In 2021, 52% of applications reviewed by the PAB in connection with subject matter objections involving computer technology resulted in an eventual allowance.
In 2022, only 13% of applications reviewed by the PAB in connection with subject matter objections involving computer technology resulted in an allowance.
Although there appears to be a significant reduction in the allowance of computer technology applications reviewed by the PAB, this does not paint the whole picture of the patentability of computer technology applications in Canada.
In June 2022, the Federal Court released a decision in Benjamin Moore & Co. v. Attorney General of Canada (2022 FC 923). In this decision, the Court disagreed with the Canadian patent office’s legal test for assessing the patentability of computer technology applications and endorsed a different framework which requires patent examiners to:
- Purposively construe the claim;
- 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; and
- 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.
While the allowance of computer technology applications reviewed by the PAB has reduced in 2022, the newly adopted framework for assessing the patentability of computer technology applications has likely increased the overall allowance rate of these applications in Canada.
It is worth noting that all of the PAB decisions on computer technology applications issued in 2022 were decided prior to the Benjamin Moore & Co. v. Attorney General of Canada (2022 FC 923) decision. Since the decision, the Canadian patent office seems to have backed off raising subject matter objections to computer technology applications.
A Notice of Appeal has been filed for the Benjamin Moore & Co. v. Attorney General of Canada (2022 FC 923) case. The appeal was heard on February 16, 2023 and we are currently awaiting a decision from the Federal Court of Appeal.