Draft MOPOP revisions – computer-implemented inventions and patentable subject matter

1. Context and background

The Manual of Patent Office Practice (MOPOP) has long served as an administrative guide for Canadian Intellectual Property Office (CIPO) examiners and patent practitioners, providing guidance on how to construe and examine patent claims under the Patent Act (the US equivalent is MPEP). However, recent Federal Court and Federal Court of Appeal cases—most notably Benjamin Moore FCA —have prompted CIPO to revise existing guidance. The Federal Court’s decision in Choueifaty (2020 FC 837) also played a key role in spurring updates to CIPO’s approach by clarifying that CIPO should not rely on purely “problem-solution” or “technological solution” frameworks for evaluating essential claim elements (in contrast with earlier PN2013-02 and PN2013-03).

PN2020-04 introduced interim guidance regarding computer-implemented inventions, emphasizing that the identity of a computer in a claim does not necessarily confer patentable subject matter if the computer is merely used in a generic manner. It also effectively set aside portions of older MOPOP sections that employed the “problem-solution” approach. Now, with the draft chapters 17 and 22, these clarifications are being incorporated into MOPOP itself.

2. Overview of proposed changes

(a) Changes in Draft Chapter 17

The revised Chapter 17 underscores the requirement that claimed subject matter must relate to an “actual invention” with identifiable “physicality.” This revised language stems partly from Benjamin Moore FCA, where the Federal Court of Appeal highlighted that merely asserting a computer among the essential elements does not, on its own, supply the necessary “physical existence or discernible physical effect.” 

Draft Chapter 17 clarifies that an “actual invention” means a practical, physical solution to a recognized problem, emphasizing:

• The combination of elements required to solve the problem.
• The importance of identifying whether the invention truly resides in the computer’s cooperation with other elements, or rather remains an abstract idea.

The new text in sections 17.02 and 17.02.01 highlights that, while a claim may recite several essential elements, the “actual invention” is not automatically all of these elements. Rather, it is the subset or combination of these elements that “cooperate” to provide a physically discernible change. This can be compared with the decisions in Shell Oil and Schlumberger: if the computer is merely a tool to perform a new formula, the essential discovery is the formula itself—an abstract idea not conferring patentability. 

(b) Changes in Draft Chapter 22

In the revised Chapter 22, CIPO has laid out guidance particular to computer-implemented inventions. A number of useful examples are provided. 

The text reiterates that a computer used in a merely conventional, generic way will not suffice for patent eligibility. Proposed sections 22.03 and 22.03.01 discuss how the improvement must relate to how the computer actually operates—e.g., reducing memory usage, improving data throughput, or otherwise manifesting a tangible technical benefit. Simply performing or automating an abstract process, or adding a “computer” to an otherwise unpatentable business method, must be distinguished from solving a “computer-centric” problem.

More specifically, sections (22.03.03(a) through (g), for instance) illustrate typical scenarios, including data compression algorithms, sensor-based input, and improved encryption protocols.  

These examples are very useful and it is worth consulting the examples when drafting the claims, especially when drafting dependent claims to serve as backup positions for patentable subject matter. These examples clarify that if the claim recites not only the steps but also the physical measurement or output that evidences real-world effect, the invention may well cross the threshold into patentable subject matter. 

An appendix at the end of this publication summarizes the examples. 

As noted in the examples, there are subtle nuances in claim drafting and specification drafting that need to be considered to best position an application in view of the guidance.

3. Actual invention approach

The term “actual invention” figures prominently in both draft chapters, serving as a critical concept in determining patentability. 

The courts explained that one must look beyond mere literal claim language—especially if that language might be “deliberately or inadvertently deceptive”—and identify what has really been discovered. 

If the essential discovery is an abstract formula or business scheme, then the “actual invention” may fail the physicality requirement. If, on the other hand, all essential claim elements cooperate to produce a discernible change in the physical realm, the invention likely meets the statutory definition of “invention” under section 2 of the Patent Act. 

It is worth contemplating the differences between the “actual invention” approach and the now outdated “essential elements” / problem-solution approach analysis from prior patent notices PN2013-02 and PN2013-03. 

4. Practical impacts and examination implications

These proposals, once finalized, will shape how examiners approach claims that rely heavily on software, algorithms, data manipulation, or purely informational processes. Practitioners can expect a more searching analysis on whether a computer-implemented element truly “cooperates” with other elements to achieve a new or better technical result. If examiners remain unconvinced that the recited steps yield a tangible physical effect, they may categorize the claim under an excluded area (merely a scientific principle, abstract theorem, or disembodied idea). 

Industries and technology fields most affected by this guidance include those where computer-implemented inventions are central to innovation. This encompasses information technology, software development, artificial intelligence and machine learning, industrial automation, and control systems. 

Sectors such as oil and gas (e.g., drilling optimization and geological modeling), manufacturing (e.g., process control and sensor integration), financial technology (e.g., trading platforms and portfolio management), and specialized devices (e.g., smart safes, medical devices, and embedded systems) are particularly affected. In these fields, demonstrating a tangible physical effect or a technical improvement in computer functionality will be critical for patent eligibility. 

The guidance also has significant implications for emerging technologies, such as quantum computing, data security, and advanced networking, where the distinction between abstract algorithms and practical, physical implementations is often nuanced. Applicants in these industries should be especially attentive to how their claims are drafted and supported, ensuring the invention is anchored in a real-world effect or a demonstrable technical advance.

5. Patent Appeal Board decisions highlighting physicality

Patent Appeal Board (PAB) decisions after PN2020-04 have shown that claims can be found patentable if they clearly recite steps indicating physical input, discernible output, or improvement in computer function, and these can provide useful guidance in an attempt to support persuasive arguments. 

For instance, in certain PAB cases where sensor-based measurements and subsequent algorithmic analysis led to an optimized drilling process or a better real-time output for an industrial process, the board found that the invention manifestly affected physical materials or machine operation. This demonstrates a viable path to emphasizing—both in the specification and in claims—the real-world “mechanical” or “technical” transformation that the invention enables.

6. Recommendations for drafting

Given these draft changes, patent applicants and their representatives may wish to highlight and document the explicit physical advantages or improvements that arise from using the claimed invention. This includes steps such as:

• Describing in detail how a new algorithm reduces memory footprint or processing cycles, and thus solves a specific technical problem.
• Setting out clearly how sensor-collected data is transformed into improved operations in a manufacturing or an industrial context, and actively including these physical steps in the claim.
• Embedding references to tangible system architecture that demonstrate direct cooperation between computing elements and real-world processes.

Likewise, ensuring that any intangible or abstract process is anchored in something physically verifiable or improves the functioning of the computer itself is key. To the extent that supporting material is available, such as experimental, simulated, or hypothesized improvements, it should be emphasized in the specification and the figures. As shown in the examples, the specification support can sometimes help provide helpful context.

7. Responding to examiner’s reports

When confronted with an examiner’s report that questions subject matter eligibility, a robust response would do well to:

• Show that at least one step involves active language and results in a discernible physical effect, such as controlling a piece of equipment, generating a real-time physical measurement, or affecting the functionality of the device itself.
• Describe the “actual invention” as a synergy of computer and other physical components, rather than leaving the computer as a mere add-on to an otherwise abstract method.
• If relevant, cite PAB decisions or analogous examples that allowed comparable claim language due to an evident physical link or technical improvement. 

This emphasis on physically anchored claims will likely prove decisive in establishing compliance with the newly articulated “physicality” threshold.

Conclusion

Overall, the draft revisions to MOPOP chapters 17 and 22 refine Canada’s stance on patentable subject matter in the face of evolving case law. 

While Canada remains relatively open to computer-implemented inventions, the new guidelines reinforce that the invention must have a real-world, physical dimension or a bona fide technical improvement. 

The changes, building on PN2020-04 and crystallized by judicial decisions such as Benjamin Moore FCA and Choueifaty, underscore that “actual invention” and demonstrable “physicality” are the pillars for patent eligibility. 

Patent applicants and counsel should now focus on explicitly documenting physical or tangible attributes during drafting, with carefully chosen claim language to ensure the invention as claimed securely falls within the acceptable boundaries of Canadian patent law. 

The authors would like to thank Shu Jing Li, articling student, for her contribution to preparing this article.