Software & Patents

Are you sure you want to patent your software/app idea?
 
Why patent software-related inventions?
Patenting software innovations may provide a number of advantages that copyright alone cannot. Some advantages of patenting software include:

• Patent protection can be broader than copyright protection (copyright only protects the expression of the idea, where patents cover the idea);
• Patents provide a reliable guide for predicting the scope of protection;
• Patents are valuable assets in strategic partnerships, mergers and acquisitions;
• Patents are favorably recognized by venture capitalists and other investors;
• Patents can generate licensing value;
• Patents will block, at least in part, a competitor’s ability to obtain subsequent broad patent protection.[1]

However, before a patent can be enforced, it is necessary to apply for and have the patent office grant a patent application.
To what extent can inventions covering software be patented?
Convincing the patent office that an invention constitutes patentable subject matter continues to be a challenge, particularly for software patent applications. The Patent Act doesn’t include the terms ‘computer’ or software’; therefore, software must meet the general requirements for patentability in the Patent Act.[2] In Canada, in order to be patentable an invention must be novel, useful and unobvious. In other words, the invention must: not have been previously disclosed in the world; be functional and operative; show ingenuity; and not be obvious to someone skilled in the art.[3]
Software innovations present additional challenges in convincing the Patent Office that they fall within the scope of “patentable subject matter”. Canadian courts have not had many opportunities to consider the patentability of software inventions. However, the issue of software patentability in Canada was recently examined in Canada (Attorney General) v Amazon.com Inc (2011 FCA 328, 2 FCR 459). The Federal Court of Appeal granted Amazon a patent for software that stored customer information to expedite future purchases (the “one-click” online ordering system), setting aside the Patent Offices’ rejection of the patent. In this case, the Federal Court of Appeal further explained that “patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change”. Many software innovations satisfy these requirements, particularly when implemented on physical devices.[4]
Following Amazon.com, the Patent Office issued new patent examination guidelines for computer-implemented inventions.[5] Specifically, the office stated that a purposive construction is needed to determine whether a computer is an essential element of the claims, thus distinguishing legitimate claims from disembodied inventions prohibited by Section 27(8) of the Patent Act.
Hundreds of patents pertaining to computer-implemented inventions have been issued by the Patent Office since Amazon.com. Nonetheless, no bright-line test exists for determining whether a claim directed at software or a computer-implemented business method will be found to constitute patentable subject matter.
Do you really need a patent for your software-related invention? Think twice before preparing a patent application.
Your computer program, whether in source code or object code, remains protected under copyright. The major advantage of copyright protection lies in its simplicity. Copyright protection does not depend on any of the formalities, this means that it arises automatically.
 
In contrast, a patent must be applied for, in principle, in each country in which you seek patent protection. In order to enjoy patent protection, an application for a patent shall comply with both formal and substantive requirements, and a patented invention shall be disclosed to the public. Due to these complex requirements for the grant of patents, the costs for obtaining and enforcing a patent may be costly. Unless you have important financial resources, it may be worth considering whether patenting your software-related innovation is the best way to protect your product. The possibility and feasibility of using other types of intellectual property, such as trademarks, industrial designs and trade secret protection, may also be considered.[6]

Amber Blair is a member of the BLG Business Venture Clinic, and is a 2nd year student at the Faculty of Law, University of Calgary.

References
[1] Smart & Biggar | Fetherstonhaugh, “Obtaining Software Patents” (October 2004), online: Smart & Biggar } Fetherstonhaugh Information Sheet (PDF) <http://www.smart-biggar.ca/Assets/Software_Patents.pdf>.
[2] Sean Gill & Grant W. C. Tisdall, “Patentability in Canada” (11 January 2016), online: Gowling WLG: Insights & Resources (blog) <https://gowlingwlg.com/en/insights-resources/articles/2016/patentability-in-canada/>.
[3] Patent Act, RSC 1985, c P-4, s. 2, 28.2, & 28.3.
[4] Cameron Gale, “Canadian Software Businesses Should Consider Patents Despite CIPO’s Misleading Messages”, (22 February 2019), online: Bereskin & Parr: Insights & Resources <https://www.lexology.com/library/detail.aspx?g=7e795fb0-a866-40d8-a777-52db6a0a6f0b>.
[5] Canadian Intellectual Property Office, “Examination Practice Respecting Computer-Implemented Inventions” (8 March 2013), online: Government of Canada < https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03627.html>.
[6] World Intellectual Property Organization, “Patenting Software”, online: World Intellectual Property Office Documents <https://www.wipo.int/sme/en/documents/software_patents_fulltext.html>.