July 21, 2006 By: Wing T. Yan and Taiji Yoshino
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The matter of software patents has been an interesting topic among intellectual property professionals. Since the Schlumberger case (Schlumberger Canada Ltd. v. Commissioner of Patents, [1981] 56 C.P.R. (2d) 204) in 1981, there has been no case law related to the topic of patentability of computer programs; however, there were numerous decisions made by the Patent Appeal Board of the Canadian Patent Office ("PAB") with regard to this matter. On the topic of computer programs, there were 35 decisions made by the PAB between 1980 and 1989. Then, there was a quiet period from 1990 to 1997, where the PAB did not have any decision on the topic of computer programs. There were then three decisions in 1998 and one decision in 1999.

Some readers may have been under the impression that a computer program, per se, is not patentable.

A computer program is a set of statements or instructions to be used in a computer to bring about a certain result. The computer program is also the representation of a particular algorithm to solve a particular problem. Because of its nature, literal statements or instructions are protected under copyright, and active processing steps being carried out may be protected under patent law.

We say that computer programs may be protected under patent law because of the nature of the computer programs, i.e. they sit somewhere between patentable subject matter and scientific principle or abstract theorem (which is not patentable subject matter).

For an invention to be patentable, it must be new, not obvious (inventive), useful, and of a statutory subject matter. Section 2 of the Patent Act ("the Act") defines "invention" (or what patentable subject matter is under the Act) as "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement [thereof]". Then, s. 27(8) of the Act is excluding patentability of any "mere scientific principle or abstract theorem".

So, it is important to see whether the invention is within the scope of the "art" defined within s. 2 of the Act. In the case of Progressive Games Inc. v. Commissioner of Patents [1999] F.C.J. No. 1623, in para. 16, it was stated that the definition of the term "art" in s. 2 of the Act as provided by the Supreme Court [in the case of Tennessee Eastman Co. v. The Commissioner of Patents, [1974] 2 S.C.R. 536] includes a process that:

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

It is observed from the PAB decisions that in addition to the above criteria further tests are often required. The first test is sometimes further evaluated based on how specific the application of the invention is, and the second is further evaluated based on whether the invention possesses any advancement in the art. The other important aspect is what the inventor is claiming (or whether it is compliant with an allowable form of claims).

The Manual Of Patent Office Practice (rev. Feb. 2005) ("MOPOP") indicates that inventions related to the "business method" are not automatically excluded from patentability; though the method of doing business was once considered unpatenable subject matter in 1999 (Re Patent Application No. 564,175, 6 C.P.R. (4th) 385). However, it is still often found that many patent applications related to business methods have not been allowed, since they seem to comprise a combination of well-known steps or processes and do not bring about any surprising effects.

If the invention can clearly show advancement in the art, then it is also observed that, if an invention has a specific application or the algorithm (or computer program) is an incidental part (just happened to be implemented with a computer) or integral part of a larger system, it is likely patentable. For example, computer programs are often used for process controls, and the steps or method of controlling such are patentable subject matter. [Re. Application For Patent of Bartley et al. (Now Patent No. 1,167,549), 3 C.P.R. (3d) 396, and Re. Application For Patent of Measurex Corp. (Now Patent No. 1,170,750), 10 C.P.R. (3d) 93].

Notable cases on how specific the application of an invention should be can be illustrated by two Patent Appeal Board decisions, namely Re. Motorola Inc. Patent Application No. 2,047,731, 86 C.P.R. (3d) 76 and Patent Appeal Board Decision No. 1231 Re. Motorola Inc. Patent Application No. 2,085,228. These applications are directed to devices estimating Jth roots and reciprocals of Jth roots and exponentials, utilizing a Read-Only Memory ("ROM") for storing coefficients, and the algorithms to carry out numerical calculations. Even though these algorithms are merely mathematical formulae, what is claimed is the specific device in the computer, which is ROM.

In the case of Re. Application For Patent of McDonald et al. (now Patent No. 1,160,345), 3 C.P.R. (3d) 299, the applicant filed a patent application for an invention directed to the thrustmeter for a jet-engined aircraft. The applicant cancelled the original claims directed to the method and added new ones directed to the apparatus, and then were allowed.

According to chapter 16 of MOPOP, there are a few variations of allowable forms of computer programs that may be claimed. They include: art or process claims; system or apparatus claims; and manufacture claims, such as a record carrier, signal medium and data structures (i.e. a memory comprising an innovative data structure).

Since Canada entered into agreement with the Trade Related Aspects of Intellectual Property Rights ("TRIPS") in 1994, Article 27.1 of TRIPS imposes an obligation on Canada to provide patent protection for any inventions, whether products or process, in all fields of technology provided that they are new, involve an inventive step, and are capable of industrial application. As a part of patent law harmonization, where one may see the U.S. as one extreme for propatent in computer programs and the European Union as the other extreme for being more difficult to be granted a patent for computer programs, it appears that Canada is placed in a unique position in the middle. At the same time, computer programs also impose an interesting issue, which can be hardly seen in traditional trades. One example is Research In Motion, LTD ("RIM") v. NTP Inc in the U.S., where an infringing system was deployed over different jurisdictions, i.e. a part of the system in Canada, and the rest in the U.S.

Wing Yan, lawyer, and Taiji Yoshino, technical consultant, specialize in intellectual property law at Nelligan O'Brien Payne LLP LLP.

[This article is reprinted with permission and first appeared in the July 2006 issue of The Lawyers Weekly.]

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.