Canada Software Patents – What Does MOPOP Say?

The Canadian Intellectual Property Office (CIPO) issues a Manual of Patent Office Practice (MOPOP) to guide applicants on the application procedure. The latest edition of MOPOP has a chapter dedicated to clarify the patentability of Computer Implemented Inventions. 

The first point emphasised by MOPOP is that Schlumberger, though the only authority on software patents, did not decide that computer implemented inventions are not patentable, but instead held that the introduction of a computer aspect to to the invention does not, by itself, make an invention any more or less patentable, and that a computer implemented invention would have to satisfy all the regular patentability requirements for the application to succeed and must fall within one of the invention categories mentioned in Section 2 of the Patent Act.

On issues of subject matter MOPOP makes it clear that a computer implemented process will only qualify as patentable subject matter upon the satisfaction of two conditions. The first is that the process must be an act or a series of acts performed by some physical agent, upon some physical object and produce in such an object some change either in character or condition.  The second condition is that the process must produce any essentially economic result relating to trade, industry or commerce. 

On the application of Subsection 27(8), MOPOP says that a claim to a method consisting only calculations made in accordance to certain formulae is excluded from patentability, because of its lack of any act performed by a physical agent upon some physical object and producing such a change of character or condition in such object. The same method will also not qualify because it does not produce an essentially economic result relating to trade, industry or commerce.

MOPOP states that there are three possible qualifying type of claims for which a computer implemented invention may be successfully patented:

  1. Art or Process (Method) Claims – These are claims for a process that defines a series of operations taking place when a computer program is run. A claim made in this form must satisfy the process requirements mentioned earlier.
  2. Machine (Apparatus) Claims – These are claims for a computer which has been configured with a novel compute program. The claims should be drafted as “means for” expressions and must involve the same level of functional step detail expected of the process equivalent claim for the same invention.
  3. Manufacture (Products or Computer Media Embodying Code) Claims – These are claims for computer readable memory devices that contain instructions to be executed by a processing system. The process to be executed by the ‘reader’ device must satisfy the requirement of a qualifying patent as specified earlier.

MOPOP also provides examples of how a qualifying claim would be drafted for each of these as well as examples of what would not be accepted as qualifying subject matter.

The MOPOP guidelines themselves seem to be very consistent with the case law and were updated before the more recent liberal decisions taken by BAP.

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