NEW CIPO STATEMENT ON PATENTABLE SUBJECT MATTER: A KEY REMINDER FOR SOFTWARE AND AI PATENTS

by Valmi Dufour-Lussier
ROBIC
LAWYERS, PATENT AND TRADEMARK AGENTS

The Canadian Intellectual Property Office (CIPO) published, in March 2026, a new practice statement on patentable subject matter under the Patent Act. This document, which replaces the previous 2020 practice statement, takes into account recent court decisions, including Dusome v Canada[1], and seeks to clarify the Office’s current approach, particularly with respect to computer‑implemented inventions, medical diagnostic methods, and medical uses.

At first glance, the practice statement appears to reframe the existing examination practice in the language of recent decisions rather than introduce substantive changes.

One point, however, warrants particular attention. When determining the nature of the invention, the examiner may now rely on the description to consider that anything not described in sufficient detail forms part of the pre-existing knowledge. This clarification reinforces the central role of the description in the analysis of patentable subject matter.

At a time when the “disclosure of the invention”[2] requirement is being applied ever more strictly by the European Patent Office, and when, in the United States, analysis continues to rely on the description to interpret certain claimed software functionalities[3], mastering disclosure has become a central issue. CIPO’s new statement thus aligns with an international trend that makes the quality of the description a strategic element.

Practical Implications for Software and AI Patents

Drafting a patent application in the software or AI field can no longer be treated as a purely formal exercise. It requires the involvement of professionals capable of deeply understanding the technical aspects of the invention, in addition to its legal implications. Insufficient disclosure can, in practice, weaken recognition of the invention’s material character and increase the risk of objections based on lack of patentable subject matter.

Applicants, particularly in the software and AI sectors, may wish to revisit their disclosure strategy in light of this new statement. Our team remains available to discuss these issues further.

[1] Dusome v Canada (Attorney General), 2025 FC 1809.
[2] European Patent Convention (EPC), Article 83
[3]  35 USC § 112(f).