Software-Related Patents:
Canada
copyright 1996, 1997 Donald M. Cameron , Aird & Berlis
Contents
Statutes
The Canadian Patent Act (1) , provides that patent protection may be acquired for any "invention", defined under s. 2 as follows:
"invention" means any 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;
subject to the prohibition of ss. 27(3) that:
"No patent shall issue for ... any mere scientific principle or abstract theorem."
Regulations
In the fall of 1994, the Canadian Patent Office issued guidelines following
recommendations from the Patent and Trademark Institute of Canada:
1. Unapplied mathematical formulae are considered equivalent to "mere scientific principles or abstract theorems" which are not patentable under section 27(8).
2. The presence of a programmed general purpose computer or a program for such computer does not lend patentability to, nor subtract patentability from, an apparatus or process.
3. It follows from 2, that new and useful processes incorporating a computer program, and apparatus incorporating a programmed computer, are directed to patentable subject matter if the computer-related matter has been integrated with another practical system that falls within an area which is traditionally patentable. This principle is illustrative of what types of computer-related application may be patentable, and is not intended to exclude other computer-related applications from patentability.
comments on the 1994 Guidelines
1. unapplied matehematical formulae are not patentable
This appears to be an attempt to restate the Patent Act which provides:
"No patent shall issue for ... any mere scientific principle or abstract theorem."
Arguably, mathematics is the language used to describe scientific phenomenon. It is the application of scientific principles in new and useful articles or processes that are patentable inventions. If this guideline is merely an attempt to restate the prohibition in the Patent Act, then why doesn't the Patent Office merely stay with the statutory language?
2 a computer program neither adds to nor subtracts from patentability
This directive merely states that the Patent Office will neither discriminate for or
against an invention which includes computer related subject matter.
By signing NAFTA and the Uruguay round of GATT, Canada has imposed upon itself an
obligation to make patents available for "any inventions ... in all fields of
technology". There is to be no discrimination as to the field of technology unless it
is a field of technology which fits under a specific exclusion.
"Knowledge-based" inventions are not so excluded.
NAFTA and GATT may help to expand the patentability of "knowledge-based" inventions in all participating nations.
3. A computer program integrated with traditionally-statutory subject matter is
patentable
This guideline states what is patentable and does not state what is not patentable.
Processes are patentable. Processes are usually a set of instructions to achieve a
desired result. Ironically, the definition of "computer program" under s. 2 of
the Canadian Copyright Act sounds similar to how one would describe a "process":
"a set of instructions or statements expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result."
The prohibition on patenting computer program may be avoided in part by characterizing
the invention as a process (or as other traditionally statutory subject matter such as an
article) rather than as a computer program. As seen below however, it is likely the
product of the process or instructions that will ultimately determine patentability.
Although the Canadian Patent Office has been issuing patents which arguably are
processes whose ultimate product is data (7) , the issue of
teh patentability of data structures will likely have to be resolved by the Federal Court
of Canada either in an appeal from a rejection by the Patent Office or in a determination
of the validity of such a patent in litigation.
Case Law
One data point plotted on a piece of graph paper creates a difficult problem in
extrapolation. Similarly, Canada's one Court decision on the patentability of
"knowledge-based" inventions makes patentability difficult to predict.
The subject matter of the Schlumberger Canada Ltd. v. Commissioner of Patents (5) case was system which used a computer to analyze data concerning soil characteristic measurements for oil and gas exploration, described in more detail at p. 205 of the reported decision:
"The appellant's application discloses a process whereby the measurements obtained in the boreholes are recorded on magnetic tapes, transmitted to a computer programmed according to the mathematical formulae set out in the specifications and converted by the computer into useful information produced in human readable form."
The Commissioner of Patents rejected the application on the ground that the applicant
had claimed, in effect, a monopoly on a computer program, which was not the proper subject
matter to be an "invention" under s. 2 of the Patent Act.
The Federal Court of Appeal held that what was new in the applicant's system was the
discovery of the mathematical formulae to be performed, which amounted to be a "mere
scientific principle or abstract theorem" - not patentable pursuant to the equivalent
of ss. 29(3) of the Patent Act. The Court held that the addition of a computer to a system
does not change the subject matter of the discovery so as to make it patentable. The
Supreme Court of Canada refused leave to appeal the Federal Court of Appeal's decision on
October 20, 1981. (6)
The case established the following two step test to determine the patentability of
computer-related inventions:
1. According to the patent application, what has been discovered?
2. Is that discovery patentable regardless of whether a computer is or should be used to implement the discovery?
Historical Development of Canadian Practice
At the outset of the 1970's, the Canadian Patent Office issued a notice to the patent
profession concerning what was considered by it to be "non-statutory subject
matter" in the area of computer-related technology. A copy of the Notice was
published in Re Application Number 862,758. (2) One
paragraph specifically described computer programs as non-statutory subject matter (at
pages 26 and 27):
"It must not be for a computer programme, an algorithm, or a set of instructions to operate a computer. Similarly it may not be for a known or general purpose computer programmed in a particular way to produce a particular result. Under this criteria, software such as punched cards or tapes carrying programmes and some hardware would be excluded. It is considered that the development of computer programmes falls within the expected skill of competent programmers, and as such lacks the requirement of non-obviousness. Furthermore, programmes in whatever form they may be presented, are essentially mathematical information developed from an algorithm and set forth in the form of a set of instructions. As such they are not allowable under Section 2(d).
As has been indicated, a known computer programmed or modified in an obvious manner so
as to accept a programme is not allowable. However a new computer involving novel and
unobvious permanently built-in structural features would be allowable, as would unobvious
structural components."
The Commissioner of Patents and the Patent Appeal Board subsequently allowed certain
claims relating to a method of controlling the operation of a computer in Re Application
Number 961,392 (3) (also known as the "Waldbaum"
case, after the inventor). It was held that a computer that is programmed in one way is a
machine which is different from the same computer when programmed in a different way. If
the new manner of the control of a computer resulted in a machine which operates in a new
and unobvious manner, then it was considered not to offend the statutory definition of
"invention".
In 1978, however, a similar application was rejected in Re Application No. 096,284. (4) The Commissioner of Patents on the recommendation of the
Patent Appeal Board reversed the position taken in the Waldbaum case, that programming a
computer in a particular way produces a "new" computer and held (at p. 110):
"When a new programme is produced, nothing but intellectual information has been added to what previously existed."
Adding an algorithm to what had previously existed was considered to be non-statutory
subject matter. The reversal occurred as a result of reviewing U.S. and U.K. law since the
Waldbaum decision.
The position of the Canadian Patent Office thus became, in 1978 as summarized at p. 111
and 112 of the 096,284 case:
1. Claims to a computer programme per se are not patentable;
2. Claims to a new method of programming a computer are not patentable;
3. Claims to a computer programmed in a novel manner, expressed in any and all modes, where the novelty lies solely in the programme or algorithm, are not directed to patentable subject-matter under s. 2 of the Patent Act;
4. Claims to a computing apparatus programmed in a novel manner, where the patentable advance is in the apparatus itself, are patentable; and
5. Claims to a method or process carried out with a specific novel apparatus devised to implement a newly discovered idea are patentable.
The decision in the 096,284 case went further to state (at p. 112):
"It is clear however, that where an invention has been made in "a process control system," where a programme is merely an incidental part of the system, it will not be objectionable. In a process control system you must, however, have novel apparatus tied to a computer which controls a function at the end of a computer. In such a case the invention is not predicated solely on the novelty of the programme."
At the time, the solution was to claim sufficient pre-computer and post-computer steps
to create a novel process control system.
Schlumberger and beyond
Following the Schlumberger decision, the Canadian Patent
Office took a noticeable "anti-computer patent" stance.
In September, 1984, the Director-General of Intellectual Property of the Government of
Canada, in a speech presented at the Annual Meeting of the Patent and Trade Mark Institute
of Canada in Victoria, B.C., observed that, following the outline of the guidelines for
determining patentable subject matter in the Schlumberger decision, Canadian patent
examiners had "embraced those guidelines with great enthusiasm". This
overly-zealous application of the guidelines had resulted in the rejection of a large
number of computer-related patent applications. Of those cases which were appealed to the
Canadian Patent Appeal Board, approximately 75 per cent have been found to contain
patentable subject matter in some form and have been returned to the Examiners for further
consideration. He stated:
"In keeping with the Schlumberger decision, we now determine whether a computer-related development falls within the area of patentability by asking ourselves the following questions:
"What has been changed by the development?" and
"Does the end result fall within a field of activity that would normally be considered patentable if a computer was not involved?"
If the answer is "yes" to the last question, we consider the development as falling within the area of patentability."
This directive effectively swung the "patentability pendulum" towards
permitting software-related inventions to be patented through the late 1980's and early
1990's.
In June 1993, the Canadian Patent Office replaced its August 1, 1978 guidelines and
published them for the "information and guidance" of practitioners. They were:
"1. Computer programs per se are not patentable.
2. Processes which are unapplied mathematical calculations, even if expressed in words rather than in mathematical symbols, are not patentable.
3. A process and/or computer program which merely produces information for mental interpretation by a human being is not patentable, nor does the process or program confer novelty upon the apparatus which uses it.
4. Claims drawn up in terms of means plus function which merely produces intellectual data are not patentable.
5. New and useful processes incorporating a programmed computer, are directed to patentable subject matter if the computer related matter has been integrated with another practical system that falls within an area which is traditionally patentable.
6. The presence of a programmed general purpose computer or a program for such computer does not lend patentability to, nor subtract patentability from, an apparatus or process."
Endnotes
1. R.S.C. 1985, c. P-4, as amended.
2. (1972) 4 C.P.R. (2d) 24.
3. (1972) 5 C.P.R. (2d) 162.
4. (1981) 52 C.P.R. (2d) 98 (Patent Appeal Board and Commissioner of Patents) (reported in part in Canadian Patent Office Record, August 1, 1978, p.xviii).
5. (1981) 56 C.P.R. (2d) 204.
6. reported at (1982) 40 N.R. 90.
7. See for example Application of Mobil Oil (1988) 24 C.P.R. (3d) 571.
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