Category: patents

In addition to the possibility of having an software patent application rejected on the grounds that it was a mere mathematical formula or abstract theorem in accordance with Section 27(8) and Schlumberger, the application might also be rejected for failing to satisfy the subject matter requirements for not being ‘art’ in accordance with section 2.

A computer program could be in essence one relating to a business method or a game, both of which have been rejected by the courts in Canada as qualifying subject matter. A business method or a game could theoretically fall under the definition of the term ‘art’ mentioned as a type of invention in section 2 of the act. In the case of Shell Oil Co v Commissioner of Patents 67 CPR (2d) 1 the court held that the “word “art” in the context of the definition must be given its general connotation of “learning or knowledge” as commonly used in expressions such as “the state of the art” or the “prior art”“.

This definition had been restricted by the courts in previous decisions to state that the term ‘art’ that do not include “professional skills”. In Lawson v Commissioner of Patents (190). 62 CPR 101 (Ex. Ct.) the court held that a method of describing and laying out parcels of land in a unique shape was not patentable as failing within the skill of a solicitor and conveyancer and that of a planning consultant and surveyor. It therefore rejected the application on the grounds that it involved a professional field and that did not fall within the meaning of section 2.

The case of Tennessee Eastman Co. v Commissioner of Patents (1970) 62  CPR 117 (Ex. Ct.) also had a decision similar to Lawson in that the court held that methods of medical or surgical treatment were also excluded because they were essentially professional skills.

It is worth noting that Lawson also defined “art”:

An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition. It is abstract in that, it is capable of contemplation of the mind. It is concrete in that it consists in the application of physical agents to physical objects and is then apparent to the senses in connection with some tangible object or instrument.

The definition makes it clear that the definition of “art” requires the existence of “physical” tangible aspects for it to qualify which may sound like a very restrictive definition, however, the court later said in the case of Shell Oil Co v Commissioner of Patents (1983) 67 CPR (2d) 1 (SCC) that “‘art’ was a word of very wide connotation and was not to be confined to new processes or products or manufacturing techniques but extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public”. 

The Shell definition is a much wider one than that of Lawson, but because of the way it was worded, it was understood by the court in the case of Progressive Games, Inc v Commissioner of Patents (1999) 3 CPR (4th) 517 (FCTD) to mean that for a process to be considered an ‘art’ it must:

1. not be a disembodied idea but has a method of practical application;
2. be a new and innovative method of applying skill or knowledge; and
3. have a result or effect that is commercially useful.

The case of Progressive Games involved a patent application for a modified version of a poker game which the court held not to be an “art” when applying the Shell Oil test as the game did not amount to “a contribution or addition to the cumulative wisdom on the subject of games” and “do not substantially modify the poker game as it exists nor do they create a new game”.

Progressive Games is another block facing the successful application of software patents as many of them are games or business methods. The new interpretation of Shell Oil in this case makes the satisfaction of subject matter issues a complex matter than requires examining novelty, non-obvious and utility at the same time. This cannot be right because it will give a patent examiner to have a “second kick at the can” for attacking the application based on these separate elements (A6). Some of the steps in the Shell Oil test also create a great level of uncertainty, as they are unlike the real separate stand alone elements, do not have established and clear tests for satisfying each of these steps (A6).

Regardless of the method for reaching the outcome of the case, it is clear from all previous court decisions that the court is not in favor of software and similar patents that do not involve a tangible element as it has never allowed them in all the instances that actually reached the court, even in the last decision of Progressive Games which was decided in 1999.

This dislike of software patents is not shared by CIPO. It will be seen from the upcoming post that CIPO has decided to use its own interpretation to allow some recent software patents to succeed even though they would have been rejected if the same court tests were applied.

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:

1. What has been discovered according to the patent application?
2. 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”. 

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:

1. Claims to a computer program per se are not patentable;
2. Claims o a new method of programming a computer are not patentable;
3. Claims to a computer program in a novel manner where the novelty lies solely in the program or algorithm are not patentable;
4. Claims to a computing apparatus programmed in a novel manner, where the patentable advance in the apparatus itself, are patentable; and
5. Claims to a method or process carries out with a specific novel apparatus devised to implement newly discovered idea are patentable. 

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.