Software patents under Canadian patent law

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Neither computers nor software are specifically mentioned in the Canadian Patent Act. [1] Canadian courts have held that the use of a computer in an invention neither lends, nor reduces patentability. Therefore, that an invention involves a computer is not determinative of patentability; instead, whether a computer-using invention is patentable turns on whether that invention meets the general requirements for patentability as would apply to any invention.

Contents

Law

Substantive law

Computers, software, or related terms do not appear anywhere in the Patent Act. Therefore, as with any other invention, to be patentable a computer-using invention must meet the general requirements for patentability of any invention as found in the Act.

"Invention" is defined in Section 2 of the Patent Act as:

"[A]ny new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". [1]

So, any invention must be new and useful. Inventions must also be non-obvious as provided in section 28.3. [2] Inventions must also fall into one of the five categories of patentable subject matter found in the definition of "invention" above.

The Patent Act has an additional prohibition in section 27(8) that "No patent shall be granted for any mere scientific principle or abstract theorem." [1] This requirement, though it does not relate directly to software, has been found by the courts to limit the patentability of some computer-using inventions. [3]

The above patentability requirements are general and apply to any invention. The case law and patent office practice determine how these general requirements are applied to patent applications for computer-using inventions.

Case law

Schlumberger Canada Ltd. v. Canada (Commissioner of Patents)

In 1981, the Federal Court of Appeal considered the question of the patentability of an invention that involved software in the case of Schlumberger. [4] In Schlumberger, the applicant sought to patent a process for analysis of measurements from boreholes for oil and gas exploration. The application described a process where the measurements were processed by a computer for mathematical analysis and display to a human operator. [5]

The court held, in the most often quoted passage of the decision, [3] that the calculations involved in the present invention would, if done by a man, be "mathematical formulae and a series of purely mental operations". The court also found that a mathematical formula fell within the prohibition in the Patent Act [2] against patents for scientific principles or abstract theorems. The court went on to find that "the fact that a computer is ... used to implement a discovery does not change the nature of that discovery." Therefore, the application was rejected as unpatentable for not falling within the definition of "invention" found in the Patent Act. [6]

The holding in Schlumberger is that the use of a computer neither adds to, nor subtracts from, the patentability of an alleged invention.

Amazon.com Inc. v. Canada (Commissioner of Patents)

In 2011, the Federal Court of Appeal again considered the question of the patentability of an invention that used software in the case of Amazon.com. [7] In Amazon.com, the applicant sought a patent for a "one-click" method of online purchasing which allowed a user to make online purchases without the requirement of re-entering billing and shipping information. The patent had been rejected by the Commissioner of Patents as non-patentable subject matter. [8]

In the Federal Court, the Patent Office's reasons for rejecting the patent, and in particular the finding that the subject of the claims was non-patentable subject matter, were found improper and the patent was directed back to the Commissioner for re-examination with the direction that the claims constitute patentable subject matter. [9]

The Commissioner appealed the decision to the Federal Court of Appeal. The Federal Court found that the "determination of subject matter must be based on a purposive construction of the patent claims." [10] In doing so, Sharlow J.A., substantially agreed with the reasons below. [11] However, the court vacated the lower courts finding that the claims constituted patentable subject matter, finding instead that the trial judge did not have the benefit of expert evidence necessary to provide a "foundation of knowledge about the relevant art" to support claims construction. [12] The court then ordered the Commissioner to re-examine the patent application on an expedited basis including construction of the claims. [13]

In considering the case, the Court of Appeals addressed the earlier case of Schlumberger, and remarked that:

"It is arguable that the patent claims in issue in this case could fail on the same reasoning, depending upon whether a purposive construction of the claims in issue leads to the conclusion that Schlumberger cannot be distinguished because the only inventive aspect of the claimed invention is the algorithm – a mathematical formula – that is programmed into the computer to cause it to take the necessary steps to accomplish a one-click online purchase. On the other hand, it is also arguable that a purposive construction of the claims may lead to the conclusion that Schlumberger is distinguishable because a new one-click method of completing an online purchase is not the whole invention but only one of a number of essential elements in a novel combination. In my view, the task of purposive construction of the claims in this case should be undertaken anew by the Commissioner, with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim." [14]

After re-examination, the Amazon.com patent was issued by the Commissioner.

Canadian Patent Office practice

On March 8, 2013, the Canadian Patent Office announced changes in patent examination practice based on the ruling in the Amazon.com case.

The Patent Office published new guidelines for the determination of statutory subject matter based on a purposive construction of claims as guided in Amazon.com. [15] Concurrently, updated guidance on examination practice for computer-related inventions was also released. [16]

Examination practice respecting purposive construction

On March 8, 2013, the Patent Office released a practice notice guiding examiners that, according to Amazon.com, the "identification of the actual invention" is "required to be grounded in a purposive construction of the patent claims". [15] The notice lays out a set of guidelines for claim construction in examination, relying on the Supreme Court decisions in the related cases of Free World Trust and Whirlpool.

Computer-implemented inventions examination practice

On March 8, 2013, the Patent Office released a practice notice revising policy on examination of "computer-implemented inventions". [16] The practice notice overrides previous sections of the Manual of Patent Office Practice (MOPOP) relating to "computer-implemented" inventions, including sections related to "examining computer claims." [17] The practice notice instead guides that the "evaluation of the subject-matter of a claim for compliance with section 2 of the Patent Act is to be made on the basis of the essential elements as determined through a purposive construction."

Notably, the practice notice states that "where a computer is found to be an essential element of a construed claim, the claimed subject-matter will generally be statutory."

See also

Related Research Articles

A software patent is a patent on a piece of software, such as a computer program, libraries, user interface, or algorithm.

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.

Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

<i>Harvard College v Canada (Commissioner of Patents)</i> Supreme Court of Canada case

Harvard College v Canada is a leading Supreme Court of Canada case concerning the patentability of higher life forms within the context of the Patent Act. At issue was the patentability of the Harvard oncomouse, a mouse that had its genome genetically altered by a cancer-promoting gene (oncogene). In a 5-4 split, the Supreme Court held that the oncomouse and higher life forms in general are not patentable subject matter in Canada.

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

There are four overriding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

<i>Aerotel Ltd v Telco Holdings Ltd</i>

Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB 2171877 granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB application 2388937 filed by Neal Macrossan but refused by the UK Patent Office.

Canadian patent law

Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.

Sufficiency of disclosure in Canadian patent law

In Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.

Subject matter in Canadian patent law

In Canadian patent law, only “inventions” are patentable. Under the Patent Act, only certain categories of things may be considered and defined as inventions. Therefore, if a patent discloses an item that fulfills the requirements of novelty, non-obviousness and utility, it may nonetheless be found invalid on the grounds that it does not fall within one of the statutory categories of “invention”. Since the Patent Act, the categories of patentable subject matter have been defined and interpreted by Canadian courts.

<i>Teva Canada Ltd v Pfizer Canada Inc</i> Supreme Court of Canada case

Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60 is a leading Supreme Court of Canada decision on the disclosure requirements for a patent in Canada.

Schlumberger Canada Ltd v Canada is a decision of the Federal Court of Appeal concerning the patentability of software inventions within the context of the Patent Act (Canada). At issue was the patentability of a method of combining and analyzing borehole measurements for oil and gas exploration using a computer programmed according to mathematical formulas. The Federal Court of Appeal held that the use of a computer "does not change the nature" of the discovered invention and that the process at issue was a "mere scientific principle or abstract theorem" and therefore not an "invention" within the meaning of the Patent Act.

Amazon.com Inc v Canada is a decision of the Federal Court of Appeal concerning the patentability of business methods within the context of the Patent Act. At issue was the patentability of a method that allowed customers shopping online to make purchases with one-click buying.

Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), was a 2014 United States Supreme Court decision about patent eligibility. The issue in the case was whether certain patent claims for a computer-implemented, electronic escrow service covered abstract ideas, which would make the claims ineligible for patent protection. The patents were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that abstract idea into patentable subject matter.

The following outline is provided as an overview of and topical guide to patents:

References

  1. 1 2 3 Patent Act, RSC 1985, c P-4
  2. 1 2 Patent Act, RSC 1985, c P-4, s 28.3
  3. 1 2 Christopher C. Van Barr; Sunny Handa (2012). Legal Protection of Software: Patents and Trade-Marks. LexisNexis Canada Inc. p. 61. ISBN   978-0-433-44338-4.
  4. ↑ Schlumberger, 56 C.P.R. (2d) 204
  5. ↑ Schlumberger, 56 C.P.R. (2d) 204 at para 2
  6. ↑ Schlumberger, 56 C.P.R. (2d) 204 at para 5
  7. ↑ Amazon.com, 2011 FCA 328
  8. ↑ Amazon.com, 2010 FC 1011 at para 10.
  9. ↑ Amazon.com, 2010 FC 1011 at para 82
  10. ↑ Amazon.com, 2011 FCA 328 at para 47.
  11. ↑ Amazon.com, 2011 FCA 328 at para 50.
  12. ↑ Amazon.com, 2011 FCA 328 at paras 72-74
  13. ↑ Amazon.com, 2011 FCA 328 at paras 72 and 75.
  14. ↑ Amazon.com, 2011 FCA 328 at para 63.
  15. 1 2 Examination Practice Respecting Purposive Construction - PN2013-02, Canadian Intellectual Property Office, March 8, 2013
  16. 1 2 Examination Practice Respecting Computer-Implemented Inventions - PN 2013-03, Canadian Intellectual Property Office, March 8, 2013
  17. ↑ MOPOP - Chapter 16 - Computer-Implemented Inventions, Canadian Intellectual Property Office
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