The position of the software patents in Canada is not a straightforward one. There is no explicit prohibitions on the patentability of software patents (or business methods) in the Canadian Patent Act, but the only software patent case that ever reached the court decided that software inventions are not patentable. This case was decided in 1981 and the computer and internet revolution has changed the face of Earth since then and there seems to be a general preference for having patents for software in the Canadian Intellectual Property Office  – which indicates in its Manual of Patent Office Practice that a qualify software may be granted a patent. The CIPO did not stop there as it has already allowed the successful application of a number of software patents. CIPO decisions and MOPOP has no legal authority, so the fact that they are granting software patents does not mean that the court will hold them valid if ever challenged.
I will examine in this post the position of the courts and various grounds for which a software patent may be rejected and then will follow that with how CIPO has changed its position over time.
Requirements Under the Patent Act
For a patent application to succeed in Canada it must satisfy the invention subject matter requirements (Section 2), novelty (s28(2)), non-obviousness (s28(3)) and utility (s2).
For application to satisfy the subject matter requirements it must fall within the definition of “invention” in Section 2 of the Act which states that it must be an “art, process, machine or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This definition is subject to sub-section 27(8) which prohibits the grant of a patent for “any mere scientific principle or abstract theorem”.
Novelty is a quantitative criteria of “newness” that requires the invention not to be part of the state of the art at the of filling.  (MOPOP S15.01.01) This basically means that the invention must not have been built, or described in a single document that contained sufficient information to allow another person to make the invention, before the application for the invention was filed.
Non-obviousness is a qualitative criteria of “inventiveness” that requires the invention not to have been obvious to a person of skill in the art at the time of filling. The test of obviousness is whether or not an unimaginative skilled technician would, in the light of the state of the art and common general knowledge at the time of filling date, be led directly and without difficulty to the invention covered by the claim. (MOPOP S15.01.02)
Utility is a requirement for the invention to be “useful” for the purpose for which it was designed. (MOPOP S15 + Progressive Games v COP)
Software patents are usually rejected on subject matter grounds and not on novelty, non-obviousness, or utility, which do not create any software specific problems to the patent application.
General Position of Software Patents – The Schlumberger Case
The only software patent case that reached the courts in Canada is the Schlumberger case (Schlumberger Canada Ltd. v. Commissioner of Patents (1981) 56 C.P.R. (2d) 204 (FCA)). The application in this case involved a computer system for the analysis of soil characteristics data for the purpose oil and gas exploration. CIPO rejected the application on the grounds that it was merely a computer program which did not fall under the definition of invention under section 2 of the Patent Act.
The application reached the Federal Court of Appeal which used a two step test to decide whether or not the application should be allowed:
- What has been discovered according to the patent application?
- Is that discovery patentable regardless of whether a computer is or should be used to implement discovery?
In applying this test the court held that “[w]has is new here is the discovery of the various calculations to be made and of the mathematical formulae to be used in making those calculations. If those calculations were not to be effected by computers but by men, the subject-matter of the application would clearly be mathematical formulae and a series of purely mental operations; as such, in my view, it would not be patentable,” and consequently rejected the application on the grounds of Section 28(3) against the patentability of a “mere scientific principle or abstract theorem”.Â
This court decision made it clear that the mere addition of a computer in a patent application will not change the subject matter of the discovery so as to rescue what is originally unpatentable. A mathematical formula was not allowed to be patentable just because it is processed by a computer.
Though Schlumberger is the only case involving software patents and it was clearly not in favour of allowing software patents, the decision did not prohibit patenting ANY software related invention, but merely one in which “what was discovered” would not be considered as a qualifying subject matter if a computer is or should be used to implement it.
CIPO interpreted this a consequent decision (Application No. 96284) to mean the following:
- Claims to a computer program per se are not patentable;
- Claims o a new method of programming a computer are not patentable;
- Claims to a computer program in a novel manner where the novelty lies solely in the program or algorithm are not patentable;
- Claims to a computing apparatus programmed in a novel manner, where the patentable advance in the apparatus itself, are patentable; and
- Claims to a method or process carries out with a specific novel apparatus devised to implement newly discovered idea are patentable.Â
This summary corresponds with the Schlumberger case as a pure computer program or an invention in which the novelty is in the program are not patentable, while an invention that uses a computer program and has its novel aspect outside the computer program would be patentable.
This position was justified at its time as the software industry was still in its early days and computer hardware was a bigger industry in which innovation was rapidly changing. Research and Development could have been easily protected by the patent system with the Schlumberger decision as the decision allows computer related inventions to be patentable where the innovation is in the apparatus (the hardware) and that adequately protects and promotes this industry.
However, this position is changed now as software is clearly one of the most important industries in world economy and there is a great need to protect and promote the investment in this field. This change in important in software is reflected in more recet CIPO decisions, which are not binding and can be overturned by any court if ever challenged.
But before we turn to the CIPO decision, we should talk in the second post about other more recent additional obstacles that face software patent application as became apparent from business method patent applications, which face a very similar objects at CIPO.