Legislative Implementation of Flexibilities - Canada

Title:	Patent Act ( R.S., 1985, c. P-4, Act current to 28/02/2011)
Field of IP:	Patents
Type of flexibility:	Patentability or exclusion from patentability, of software-related inventions
Summary table:

Provisions of Law

No explicit provision of law

MANUAL OF PATENT OFFICE PRACTICE

16.02 Subject-matter

As with any invention, in order to be patentable under the Patent Act the claimed subject-matter of a computer-implemented invention must fall within one of the five categories found within the section 2 definition of "invention", namely art, process, machine, manufacture or composition of matter.

The following sections set out how the five categories of invention apply to computer-implemented inventions in particular, and consequently refine the more general guidance provided in Chapter 12 of this manual.

A computer-implemented invention may be claimed as a method (art, process or method of manufacture), machine (generally, a device that relies on a computer for its operation), or product (an article of manufacture). Certain subject-matter relevant in the computer arts may not be claimed as such, including computer programs 16.08.04, data structures 16.09.02, and computer-generated signals 16.09.05.1

A guiding principle in respect of computer-related inventions was provided by the Federal Court of Appeal in Schlumberger, which noted that "the fact that a computer is or should be used to implement a discovery does not change the nature of that discovery", and also that the presence of a computer cannot effect the "transforming into patentable subject-matter [of] what would, otherwise, be clearly not patentable".

16.03.02 Patentability and programming

A computer program is not, by itself, statutory subject-matter. However, if the result of running the program on a computer is to provide a novel and inventive technological solution to a technological problem, then the program is viewed as modifying the technological nature of the computer as a whole. The program in such cases is not a discrete element of a claim to the computer.

In considering whether a program will bestow patentability on an otherwise-known computer, the goal is therefore to identify whether it provides a novel and inventive technological solution to a technological problem.

In cases where the computer program expresses a statutory method (i.e. a series of steps which provides a technological solution to a technological problem), the program will be considered to be technological in nature. If the method is also both novel and inventive, then the programmed computer would be patentable. Thus, as noted in 16.02.03, where a computer implements the entirety of a patentable method, the computer is patentable. If the method, while technological, is not novel and inventive then it is not sufficient to render the computer patentable. Note that where the computer only implements part of a patentable method, care must be taken to base the assessment only on those parts of the method which take place on the computer, and not on the basis of the method as a whole.

On the other hand, where the computer program expresses a non-statutory method, the non-statutory method itself is not a patentable contribution, regardless of whether it is novel and inventive. The patentability of the computer claims in such cases will depend on additional elements defining how the computer is adapted to implement the method. These additional elements may or may not be novel and inventive, depending on their nature and complexity and the state of the art in programming at the relevant date. Where inventive effort is needed to enable a computer to implement a method in a novel way, a technological solution to a technological problem has been contributed.

In determining whether the program's design is inventive or not, the examiner will be guided by the description. Paragraph 80(1)(d) of the Patent Rulesstates that the description shall "describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution".

Thus, it should be clear from the description what technical (technological) problem is being addressed, and what solution is being proposed by the inventors. Where the examiner is considering whether ingenuity was required in reducing an algorithm to a specific series of operations to be carried out by the computer program, the level of detail included in the description will be informative.

Where the application includes no details regarding how the computer program is to operate, this suggests the applicant considers the manner of implementing their method to be uninventive. It can be appropriately concluded by the examiner that there is no invention in the reduction to practice of the method. This conclusion is not prejudicial to the applicant, since even if the applicant were incorrect in considering the development of the program to be uninventive it would nevertheless follow that the description would not be enabling. Given the lack of disclosure, the programmer would be called upon to exercise inventive effort in determining how the program is to operate.

Where a greater level of detail is provided, the examiner must consider whether the specific implementation is an inventive solution to a technological problem in respect of the operation of the computer, and thereby determine if the computer itself has been contributed.