What are patents?
Successful business are built on innovative ideas.  These ideas are protected by the government through patents.  If you want to have an assured protection for your idea you may want to explore the option of patents.
A patent is a document that provide a time-limited, legally protected, exclusive right to make, use and sell an invention.[1]  They apply to newly developed technology as well as to improvements on existing products or processes defining an invention.  In Canada a patent lasts for 20 years from the date it is filed and protects the inventor’s rights in Canada.[2] 
To patent an idea in Canada, you will have to file a patent application with the Canadian Intellectual Property Office. The CIPO will then determine whether your idea meets the requirements for patentability.  In order to be patentable an invention must be (1) a matter that can be patented, (2) novel, (3) useful, and (4) inventive and non-obvious.[3]
Patentable Subject Matter
In Canada only “inventions” are patentable.[4]  Inventions are defined in the Patent Act as:
[A]ny new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. [5]
These five categories of invention – art, process, machine, manufacture and composition of matter – have been further defined by the Canadian Intellectual Property Office and by the courts. 
“Art” has been defined broadly as a process that (a) is not a disembodied idea but has a method of practical application, (b) is a new and innovative method of applying skill or knowledge; and (c) has a result or effect that is commercially useful.[6]  A “process” is the application of a method to a material or materials.[7]  A “machine” is the mechanical and/or physical embodiment of any function or mode of operation designed to accomplish a particular effect, wherein the parts of the machine cooperate to accomplish the effect.[8]  “Manufacture” refers to “a non-living mechanistic product or process” and as being the process of making technical articles or materials by the application of physical labour or mechanical power, or the article or material made by such a process.[9]  Lastly, a “composition of matter” is defined as a combination of ingredients or substances as a chemical union or physical mixture.[10]
Most inventions, 90% of patents in fact, are not breaking entirely new ground, but are instead improvements on existing arts, processes, machines, manufacturers and compositions of matter.[11]  Improvements upon these categories of inventions are also patentable.[12] 
According to the Patent Act you cannot patent a scientific principle or an abstract theorem.[13]   There aer a number of other excluded or contentious subject matters, including some methods of doing business,[14] methods of medical treatment or surgery,[15] or fine arts[16].
Novelty
In order to be patentable an invention must be new and inventive.  The definition of “invention” in the Patent Act makes “new” a requisite.[17]  In order to be “new” under the Patent Act the subject matter of a patent application: must not have been made public by the applicant (or someone who obtained their knowledge from the applicant) for more than one year before applying; must not be made public by someone independent of the applicant; and must not already be subject to an earlier patent application.[18] 
Essentially, in Canada the first applicant to file a patent is the one entitled to obtain the patent and any public disclosure of an invention before filing can prevent you from obtaining a patent.[19]  The Canadian Patents Database is searchable online and can be used for determining novelty by checking for any possible conflicts with already existing patents.  It is also best to file for a patent before, or very soon after, public disclosure.
Usefulness or Utility
An invention must be “useful” according to the Patent Act.[20]  In order to be useful the invention must work or be advantageous for its designated purpose – it has to function and it has to fulfil some purpose.[21]  This usefulness must be established through demonstration or by sound prediction at the time of the patent application.  Utility can be established by sound prediction when “utility can be predicted in advance of complete testing”[22]  This can be shown when (1) there is a factual basis for the prediction, (2) the inventor articulates a sound line of reasoning for the desired result to be inferred from the factual basis, and (3) there is proper disclosure of this information.[23]
Inventiveness of Non-Obviousness
In order to be patentable, an invention not have been obvious to a person skilled in the art or science to which the invention pertains before the patent application is filed.[24]  Non-obviousness is determined in a four part test where you (1) imagine a “person skilled in the art” the patent application’s subject matter is concerned with, (2) identify the inventive concept of the claim in question, (3) identify the differences between the “state of the art” at the time and the claim, and then finally (4) decide whether the differences identified could constitute ‘steps’ to the invention claimed that would have been obvious to the “person skilled in the art” or was inventiveness required.[25]
Generally, there is a halo of obvious solutions or improvements surrounding any old invention or problem.  An invention must stretch beyond this limit in order to be inventive.
Conclusion
If all of these requirements are met your idea is likely to be patentable.  But it’s important to keep in mind the potential downsides to patenting your invention.  Patents are expensive.  Filing fees alone are hundreds of dollars and you must pay maintenance fees for the entire 20 years of the patent.[26]  While small entities have a discount, these fees can easily add up.  The patent application process is also complicated and can take considerable time.  The Canadian Intellectual Property Office recommends you retain a registered patent agent to help with the complexities of patent law, which can be another expense difficult for a small business to swallow.
There are other protections for your ideas at law that might fit better you may want to consider before patenting, such as trademarks or copyright, some of which are protected at common law and don’t require a registration.  Overall, patents are a powerful option for protecting inventions but you should first be sure that your idea qualifies and that a patent won’t be more trouble than it’s worth for your business.

Kiara Brown is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary.

References
[1] Canada, Canadian Intellectual Property Office,  “What is a patent?” (Ottawa: CIPO, 1 December 2015) [What is a patent?].
[2] Ibid.
[3] Ibid.
[4] Patent Act, RSC 1985, c P-4 [Patent Act] (The Patent Act defines patents as letters patent for an invention at s 2).
[5] Ibid.
[6] Progressive Games, Inc v Canada (Commissioner of Patents), [1999] FCJ No 1623 at para 16, 3 CPR (4th) 517.
[7] Canada (Commissioner of Patents) v Ciba Ltd [1959] SCR 378 at 383, 18 DLR (2d) 375.
[8] Canada, Canadian Intellectual Property Office,  Manual of Patent Office Practice (Ottawa: CIPO, 29 October 2018) at 12.01.03 [MOPOP].
[9] Harvard College v Canada (Commissioner of Patents) 2002 SCC 76 at para 159, [2002] 4 SCR 45.
[10] David Vaver, Intellectual Property Law: Copyright, Patents, Trade-Marks, 2nd ed  (Toronto: Irwin Law, 2011) at 294.
[11] Canada, Canadian Intellectual Property Office,  “A guide to patents” (Ottawa: CIPO, 26 September 2018) [Guide to patents].
[12] Supra note 5.
[13] Ibid.
[14] Amazon.com Inc, Re 2011 FCA 328 at para 59-63, [2011] FCJ No 1621 [Amazon].
[15] Supra note 8, MOPOP at 12.03.02.
[16] Supra note 14, Amazon at para 58.
[17] Supra note 5.
[18] Ibid at s 28.2(1).
[19] Supra note 1, What is a patent?.
[20] Supra note 5.
[21] Supra note 11, Guide to patents.
[22] Apotex Inc v Wellcome Foundation Ltd 2002 SCC 77 at para 69, [2002] 4 SCR 153 [Apotex].
[23] Ibid at para 70.
[24] Supra note 5 at 28.3.
[25] Supra note 22, Apotex at para 67.
[26] Canada, Canadian Intellectual Property Office,  “Standard fees for patents” (Ottawa: CIPO, 8 August 2019)

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>.