Software Patents in Canada – The Position of the Courts (2)

In addition to the possibility of having an software patent application rejected on the grounds that it was a mere mathematical formula or abstract theorem in accordance with Section 27(8) and Schlumberger, the application might also be rejected for failing to satisfy the subject matter requirements for not being ‘art’ in accordance with section 2.

A computer program could be in essence one relating to a business method or a game, both of which have been rejected by the courts in Canada as qualifying subject matter. A business method or a game could theoretically fall under the definition of the term ‘art’ mentioned as a type of invention in section 2 of the act. In the case of Shell Oil Co v Commissioner of Patents 67 CPR (2d) 1 the court held that the “word “art” in the context of the definition must be given its general connotation of “learning or knowledge” as commonly used in expressions such as “the state of the art” or the “prior art”“.

This definition had been restricted by the courts in previous decisions to state that the term ‘art’ that do not include “professional skills”. In Lawson v Commissioner of Patents (190). 62 CPR 101 (Ex. Ct.) the court held that a method of describing and laying out parcels of land in a unique shape was not patentable as failing within the skill of a solicitor and conveyancer and that of a planning consultant and surveyor. It therefore rejected the application on the grounds that it involved a professional field and that did not fall within the meaning of section 2.

The case of Tennessee Eastman Co. v Commissioner of Patents (1970) 62  CPR 117 (Ex. Ct.) also had a decision similar to Lawson in that the court held that methods of medical or surgical treatment were also excluded because they were essentially professional skills.

It is worth noting that Lawson also defined “art”:

An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition. It is abstract in that, it is capable of contemplation of the mind. It is concrete in that it consists in the application of physical agents to physical objects and is then apparent to the senses in connection with some tangible object or instrument.

The definition makes it clear that the definition of “art” requires the existence of “physical” tangible aspects for it to qualify which may sound like a very restrictive definition, however, the court later said in the case of Shell Oil Co v Commissioner of Patents (1983) 67 CPR (2d) 1 (SCC) that “‘art’ was a word of very wide connotation and was not to be confined to new processes or products or manufacturing techniques but extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public”. 

The Shell definition is a much wider one than that of Lawson, but because of the way it was worded, it was understood by the court in the case of Progressive Games, Inc v Commissioner of Patents (1999) 3 CPR (4th) 517 (FCTD) to mean that for a process to be considered an ‘art’ it must:

  1. not be a disembodied idea but has a method of practical application;
  2. be a new and innovative method of applying skill or knowledge; and
  3. have a result or effect that is commercially useful.

The case of Progressive Games involved a patent application for a modified version of a poker game which the court held not to be an “art” when applying the Shell Oil test as the game did not amount to “a contribution or addition to the cumulative wisdom on the subject of games” and “do not substantially modify the poker game as it exists nor do they create a new game”.

Progressive Games is another block facing the successful application of software patents as many of them are games or business methods. The new interpretation of Shell Oil in this case makes the satisfaction of subject matter issues a complex matter than requires examining novelty, non-obvious and utility at the same time. This cannot be right because it will give a patent examiner to have a “second kick at the can” for attacking the application based on these separate elements (A6). Some of the steps in the Shell Oil test also create a great level of uncertainty, as they are unlike the real separate stand alone elements, do not have established and clear tests for satisfying each of these steps (A6).

Regardless of the method for reaching the outcome of the case, it is clear from all previous court decisions that the court is not in favor of software and similar patents that do not involve a tangible element as it has never allowed them in all the instances that actually reached the court, even in the last decision of Progressive Games which was decided in 1999.

This dislike of software patents is not shared by CIPO. It will be seen from the upcoming post that CIPO has decided to use its own interpretation to allow some recent software patents to succeed even though they would have been rejected if the same court tests were applied.

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