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  • Writer's pictureThe Moot Times UCalgary Law

Software – can you patent it?

By Ryan Jones

Have you ever wondered whether you could patent an idea for a mobile phone application, Microsoft Excel model to automate your expense calculations, or a unique website? Well, it depends. The Canadian law surrounding the patentability of computer implemented inventions, which include software and business methods, is complex and unsettled.

A patent is the right, given by the government to an inventor, who in many cases must sign over that right to their employer, to stop others from making, using, or selling an invention., Generally speaking, to obtain a Canadian patent, one must prepare and file a patent application with the Canadian Intellectual Property Office (CIPO), where it will be reviewed by a Patent Examiner. If the Patent Examiner finds that the application complies with the Patent Act and Patent Rules, the Commissioner of Patents will grant the application, which then becomes an issued patent. The claims of the patent define its scope of protection.

For an invention to be deemed patentable, it must be useful, novel, and non-obvious. Another requirement is that the invention is directed to patent eligible subject matter. In Canada, abstract ideas do not fall within the categories of patent eligible subject matter set out in section 2 of the Patent Act., Algorithms and business methods, which may be computer implemented inventions, are often considered abstract ideas and thus tend to encounter difficulties at the CIPO. Despite its commercial significance, there are not many Canadian cases providing guidance in this technical area.

One important Canadian case concerning computer implemented inventions is Canada v Amazon. The patent at issue in Canada v Amazon is CA 2,246,933, which is directed to Amazon’s “1-Click” online checkout process. As outlined in the background of the patent, shopping in 1998 presented problems because of the number of interactions required between the customer’s computer and the merchant’s computer during an online purchase, many of which needed to be duplicated in subsequent purchases. The time taken to re-enter information, such as identification and credit information, may have frustrated and discouraged the customer, and increased the risk of the customer’s information being intercepted by a third party. According to the Amazon patent, the automatic process of retrieving data and generating sale and delivery instructions addresses the foregoing drawbacks.

Initially, the CIPO rejected the claims of Amazon’s patent for allegedly not being directed to patent eligible subject matter. The Commissioner of Patents found that although Amazon’s patent claims were directed to a “machine” which is patentable subject matter, the substance of the claims was directed to streamlining sales and thus was a “business method.” Amazon appealed the Commissioner’s decision to the Federal Court. Amazon’s appeal was allowed, and the Commissioner’s decision was quashed. The court found that the Commissioner’s formulation and analysis of Amazon’s claims departed from the approach set out in a Supreme Court of Canada (SCC) precedent. The Commissioner appealed the Federal Court decision, and in Canada v Amazon, the FCA allowed the appeal, but ordered that the patent application be re-examined by the Commissioner on an expedited basis. The FCA found that by not purposively construing the patent claims, the Commissioner adopted an analysis that was incorrect in law. The Court was of the view that during re-examination, the Commissioner should purposively construe the claims. The Commissioner quickly allowed the application instead of appealing the decision to the SCC.

Following Canada v Amazon, in 2012 and 2013, the CIPO posted practice notices, instructing Patent Examiners on how to evaluate computer implemented inventions. Interestingly, certain examination practices recommended in the notices seemed to be inconsistent with substantive principles of law set out by the SCC., More recently, following Choueifaty, a case also involving a computer implemented invention, another practice notice was posted which appeared to conflict with Canada v Amazon and Choueifaty. Lastly, in Canada v Benjamin Moore, the FCA presented a new test for patentable subject matter and ordered the Commissioner to re-examine the patent applications at issue using the test set out in the CIPO practice notice released after Choueifaty.

The foregoing provides a brief overview of several key developments for computer implemented inventions in Canada. These developments highlight why determining patentable subject matter eligibility for computer implemented inventions remains challenging, and the importance of engaging certified Canadian patent professionals when considering obtaining patent protection.

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