A recent decision of the Canadian Intellectual Property Office (CIPO) illustrates various issues in why we at Perpetual Motion Patents recommend you file in certain locations and not others, and why we use certain language. Use the wrong claim claim language and your application will be rejected for want of patent eligibility.
The Patent Appeal Board is your last chance at the patent office
Patent Appeal Board (PAB) at the Canadian Intellectual Property Office (CIPO) is a group of patent examiners who provides recommendations to the Commissioner of Patents on various topics. The PAB reviews patent applications that have been rejected by patent examiners. These decisions are administrative in nature, meaning these decisions have little value as precedence, but they are useful to see how patent examiners view certain issues.
The case of Re Campbell
Details of the case are per Alan Macek, a leader in Canadian patent agents. Alan shares:
- 2024 CACP 18 – Patent Application No. 2816107 – SYSTEM AND METHOD FOR MACHINE BASED MEDICAL DIAGNOSTIC CODE IDENTIFICATION, ACCUMULATION, ANALYSIS AND AUTOMATIC CLAIM PROCESS ADJUDICATION (Stanley Victor Campbell (Re))
- PAB Topics: Subject Matter – Computer Programs; Subject Matter – Meaning of Art
- Summary: “In view of the above, I [PAB member] recommend that the application be refused on the grounds that: · claims 1 to 27 on file encompass subject-matter outside the definition of invention and do not comply with section 2 of the Patent Act; and · claims 1 to 27 define subject-matter prohibited by subsection 27(8) of the Patent Act.”
There are four things of note:
- PAB rejects most appeals.
- The application relates to medical billing.
- Patent eligibility considerations involve at least two steps.
- Claim language matters.
1. PAB rejects most appeals
Last year (2024) PAB released 20 decisions and allowed the appeal in 4 instances. (See red and green column chart.) Their allowance rate for the year is 20% and over the last five years is 33.7%. (See combination chart.) Looking at the last 20 decisions related to patent eligibility 5 were allowed. So it is no surprise PAB rejected an application.
They also reject most Computer Implemented Inventions (CII). However, two of the allowed cases last year related to CII. 2024 CACP 8 related to a trading platform for financial assets. 2023 CACP 26 relates to a drilling method in oil or gas extraction.
2. This is a medical billing related invention
Medical billing isn’t a serious topic in this country. Sure there are a lot of invoices and payments in Canada but it isn’t as complicated in the US. We have no feel for the complexities of this case. Also Canadians are biased against private healthcare. All this suggests this case wouldn’t be allowed. So we have to ask why it was filed in Canada?
Now there are many topics that are hard to patent in Canada including medical billing, lotteries, and financial trades. The first question to ask is is there a business need to file in Canada. Then consider how to prepare the application to meet Canadian requirements.
3. Dual requirements of patent eligibility and non-exclusion
That one has to consider if the claim covers patent eligibility material that is not excluded.
Section 2 of the Patent Act defines patent eligible subject matter stating that an “invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any” of the stated categories.
Subsection 27(8) also prescribes that: “No patent shall be granted for any mere scientific principle or abstract theorem.”
So you have to show your claims are eligible and not excluded. Note that exclusions can be by statute or case law. Generally you don’t want to claim things that are patent profanity like “an algorithm” or something that is deemed abstract.
4. Claim language matters to patent eligibility
The claim language in 2024 CACP 18 isn’t helpful to get allowance. The preamble reads “A system for performing Medical Code-based decision-making”. What is that? Consider how more concrete it would be to use an outcome like “A medical code-based resolution system” That is to drop the gerund plus “for” and focus on the outcome. Indeed we avoid gerunds or verbs ending in ING in the preamble with the exception of comprising.
The preamble contradicts the body. Consider how it is a system “comprising at least one processor, wherein said at least one processor is programmed to perform: a. a Medical Code processor function configured to …” What is a processor function? Is that part of a processor? Is the “Medical Code processor” different from the “at least one processor”?
The writing crutch “configured to” is a problem. The “Medical Code processor is configured to” do something in each of (a) through (f). This should at the very least be refactored and placed only in the preamble. However, it also suggests a broad limitation. You want to suggest a narrow limitation to the examiner.
The claim is functional in nature. The phrase “configured to” and the use of the word “function” are functional. Further the claims don’t recite the specific components or operations employed to achieve the function. This creates a problem in claim scope and subject matter. The scope issues are best left for another post. As far as patent eligibility goes, your examiner will place minimal weight on the functional claim language.
Hire the right patent agents
We avoid these issues of claim language by adopting more cumbersome language that is less abstract. Our claims recite the specific components in your system or operations employed in your method.
Rather than discuss your claims or those of our clients consider two public examples. Consider 2024 CACP 8 where claim 1 reads:
A computer-implemented post-transactional affirmation method for confirming details related to credit derivative trades comprising: receiving, via an electronic processing platform, directly from a first party trade capture system associated with a first party, trade details comprising …
This language is less functional and more definite than the language in Re Campbell. Also despite being about a traditionally patent ineligible subject matter the claim was allowed.
The language in 2023 CACP 26 is less abstract than in Re Campbell. Consider part of the claim as allowed:
Determining, using the processor, if both the constraining surface and the constrained surface are being built, and if only the constraining surface is built, performing steps (i) and (ii) below; and if both the constraining surface and the constrained surface are being built, performing only step (ii) below:(i) interpolating values for the constrained surface … (ii) approximating …
This is less abstract than the medical code claim in Re Campbell. For example, the actor in the method is clear it is “a processor”. Also the claim recites the logic in the operation.
You can mix components or acts and function. Consider the language in 2821804 where the applicant was successful at the PAB (2022 CACP 7).
A point of sale system including a lottery, comprising: a cash register for receiving a payment and a printer for printing a receipt for a point of sale transaction; a computer adapted to communicate with the cash register to enable calculating change money information for the point of sale transaction including: enabling the point of sale system to determine a total; receiving a payment via the cash register; calculating a change amount by subtracting the total from the payment received; the computer being further adapted to: …
Yes there is a lot of functional language but the patentee is also defining their exclusive rights in concrete terms like things, e.g., cash register, printer, point of sale system; or steps, e.g., calculating a change amount by subtracting the total from the payment received. Now there are other issues with this claim, namely is everything recited needed?
So that is why we write claims the way we do. We recite concrete things or acts. We avoid functional language but if used we make sure it is not abstract or can be interpreted as performed by recited components or act. We go even further using language that is harder to read but increases the chances the examiner will allow your claims. Finally we consider the breadth of the claim and remove as much as we can while still retaining an allowable claim.
Conclusion
These are complicated topics and we hope this post explains a little of why we do things they way we do. If you would like to discuss protecting your invention with a patent application please contact us.