Strategic coach: Professional growth model software found to be non-patentable subject matter

The Patent Appeal Board (the Board) recently published a Commissioner of Patents’ decision (Commissioner’s decision) determining that a software patent was invalid for claiming unpatentable subject matter, claiming obvious subject matter, having indefinite claims, improper dependent claims and having new matter. 

This decision and the underlying patent application can be compared against other Commissioner’s decisions that ultimately found there was patentable subject matter, for example, through adding amendments that helped add “physicality” to the claimed embodiments.

Background

In The Strategic Coach (Re), the Commissioner refused Canadian patent application 2713371, entitled "Systems and Methods for Providing Information Relating to Professional Growth” (the Application). The invention was directed to software providing career management information to clients.

In this decision, the Board considered the guidance of PN2020-04 and of the Federal Court and Federal Court of Appeal in Canada (Attorney General) v Amazon.com Inc, 2011 FCA 328 (Amazon), Schlumberger Canada Ltd v Commissioner of Patents, [1982] 1 FC 845 (CA) (Schlumberger), and Canada (Attorney General) v Benjamin Moore & Co, 2023 FCA 168 (Benjamin Moore FCA).

The claimed subject matter in the Application relates to “professional growth tools,” describing a method, system, and stored software for providing information regarding professional growth, assisting a client reach a level of professional growth, and managing professional growth. The Application was filed in August 2010. Following four rounds of examiner requisitions and responses, the Application was rejected in a final action for claiming unpatentable subject matter, claiming obvious subject matter, having indefinite claims, improper dependent claims and having new matter. 

The applicants filed a response disagreeing with the rejection and submitted an amended application, amending the claims and description. The Application was forwarded to the Board in June 2020. The Board’s preliminary review letter recommended refusing the Application. The applicant requested an in-person hearing, which was held in January 2025. 

Legal principles

The Federal Court of Appeal has noted (emphasis added): "[...] the Commissioner should keep an open mind and not hastily conclude that the subject matter claimed is not patentable simply because it involves the use of conventional computer technology. As always, the determination of patentability is a highly fact specific exercise, and it is impossible to attempt to define the full spectrum of particular circumstances that may exist depending on the nature of a particular invention implemented by computer in these reasons.” 

Software and computer-implemented inventions are patentable in Canada; however, in the current guidance, there is a requirement that the invention improves the functionality of a computer or have sufficient “physicality.” To have “physicality” the actual invention must either have physical existence or manifest a discernible physical effect or change (PN2020-04). 

The PAB decision

The “physicality requirement” for patentable subject matter

The Patent Office has set out the “physicality requirement” for determining if a claim is directed to patentable subject matter in PN2020-04.

The Applicant submitted during the hearing that this “physicality requirement” is not based on the Patent Act or Patent Rules, or on jurisprudence. The Applicant argued there is no need for a discernible physical effect or change, only a need for either a physical existence or a discernable effect or change, referring to an example from CIPO’s Manual of Patent Office Practice (MOPOP) as, if not for cited prior art, presenting patentable subject matter despite a lack of physicality.

The Board rejected this characterization of the example and affirmed the MOPOP section in question has been superseded by Patent Office guidance on the physicality requirement. 

The physicality requirement

The Applicant submitted that the invention claimed a computer was an essential element of the invention. Relying on PN2020-04 and Benjamin Moore FCA, the Board stated the inclusion of a computer as an essential element of the invention does not mean it is part of the actual invention and does not automatically mean the invention is patentable.

The Applicant also submitted that the claimed invention constitutes improvements to the functioning of a computer, by the system pulling data into a relational database, establishing or determining associations among the data, then combining the data with strategy template information to generate useful custom strategies. The Applicant described this activity as “machine learning.”

In the final action, the examiner maintained that:

Utilizing a computer to "consider factors" and "provide recommendations" refers to well-known automation of otherwise manual or mental processes. In this case, the computer used in the claims is used for performing generic and well-known data processing tasks. Hence, the computer is not considered to be part of the identified solution to the identified problem.

Additionally, the examiner found that (emphasis added): 

Utilizing generic computers as calculators does not automatically make the computer essential […] Rather it is directed to business data processing using generic computers.

The Board found the invention to be an abstract set of rules for providing professional growth information. The computers were being used in the invention in a well-known way, the Board found, and their involvement was common general knowledge. There was no evidence in the application as to how a computer is used, or any evidence in the description of the system pulling in data. 

While it was described that the system “may obtain data entries from a variety of data sources” and the relational database may “determine associations of data entries regarding a client,” the description does not say how or provide more details. There was no suggestion of how the database might determine associations between data entries or that there is any suggestion of “machine learning.” 

Obviousness, indefiniteness, and new matter

The Board found the differences also would have been obvious to the skilled person given their common general knowledge and the disclosure of other prior art that discloses the automatic computation of progress. 

In its preliminary review, the Board highlighted that certain claims were indefinite, and certain dependent claims lacked additional features. The Board additionally identified that certain paragraphs of the description in the Application recited new matter not found elsewhere in the Application when it was filed and contradicted other parts of the description and drawings.

The author would like to thank Beatrice Kaiser, articling student, for her contribution to preparing this IP monitor.