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Software Related InventionsPatentable Subject Matter
Donald M. Cameron
2014
Donald M. Cameron
Introduction
Why be concerned about patentability of software?
This is a quickly changing area of law
Many smaller businesses (technology companies) don’t receive investment unless they can get patents
It illustrates how the courts and patent offices grapple with issues of new patentable subject matter.
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Introduction Cont.d
• What is excluded from patentability?– Mere formula, equations, theorems.– Inventions requiring input of professional skill and
judgment.– Automating a known process.
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Canada – Statutory Definition
Must be an “Invention” under the Patent Act.
“Invention” means any new and useful
Art;
Process;
Machine;
Manufacture; or,
Composition of matter … (s.2 Patent Act)
No patent shall be granted for any mere scientific principle or abstract theorem (Sub-s. 27(8) Patent Act).
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Introduction Cont.d
Some key Doctrinal Questions
If the basis of software is an algorithm (which is a type of mathematical formula) how do we:
permit software patenting?
despite prohibitions on patenting mathematical formula?
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Introduction Cont.d
Why does the Patent Act exclude formulae, equations, theorems?
Potentially too broad scope of coverage?
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Introduction Cont.d
What will we consider? Hardware Software Data Structures Signals Business Methods
Why are we concerned about these different aspects of computer systems? Gives patent owner different people to sue.
Customers vs. Competitors Cross-Border Systems
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United States
Patentability of software and business methods had been thought to be resolved for years.
Software and business method inventions are patentable when they produce a “real, concrete, and tangible result”.
Key Decision: State Street Financial v. Signature Financial Group Inc.
In the past 2-3 years, this has all changed.
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Europe
Inventions require industrial applicability, novelty, an inventive step, and a “technical character”.
Specific exemptions to patentability relate to computer programs and business methods.
The European Patent Office (“EPO”) has determined that certain computer-implemented inventions are patentable but has stopped short on business methods.
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Canada – Case Law
Shell Oil Co. v. Commissioner of Patents (1982) 67 C.P.R> (2d) 1 (S.C.C.)
“Art” is a word of very wide connotation and not to be confined … but extended to new and innovative methods of applying skill or knowledge provided that produce effects or results commercially useful to the public.
This broad definition of art has been lately restricted in Harvard Mouse and Monsanto v. Schmeiser cases.
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The Common Principles11
You can’t patent math or science
You can patent applied science
?Where’s the dividing line?
The Common PrinciplesCont.d
Claim 8. A method for calculating value “f”, comprising the step of” Calculating f = m · a.
Claim 9. A computer implemented method for determining the force “f” provided by a moving brick, comprising the steps of:
Inputting variable “m”, where “m” is the mass of the moving brick measured in kilograms;
Inputting variable “a”, where a is the acceleration of the moving brick measured in meters per second per second;
Automatically calculating f = m · a, where “f” is the force provided by the moving brick in newtons; and,
Displaying variable “f”.
These are not proper subject matter.
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U.S.A. - Software
AT&T v. Excel Communications
method of processing long distance carrier data
was patentable
does the number crunching produce a
useful, concrete and tangible result
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U.S.A. - SoftwareCont.d
U.S.A. Beauregard Inventive program on a disk
But – what does the program or software do?
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Canada
Schlumberger Canada Ltd. v. Commissioner of Patents (1981), 56 C.P.R (2d) 204 (FCA)
Measurements obtained in the boreholes are recorded on magnetic tapes, transmitted to a computer, modified by mathematical formula set out in the specification and converted to human readable form.
Not patentable:
“mere scientific principle or abstract theorem”
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CanadaCont.d
Schlumberger Canada Ltd. v. Commissioner of Patents
“What the appellant claims as an invention here is merely the discovery that by making certain calculations according to certain formulae, useful information could be extracted from certain measurements. This is not, in my view, an invention within the meaning of s.2”
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CanadaCont.d
The 1994 CIPO Guidelines:
1. Unapplied mathematical formulae are not patentable
2. Computer programs neither add to nor subtract from patentability
3. Computer program integrated with traditional subject matter is patentable
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CanadaCont.d
In 2005, Canadian Patent Office issued new guidelines for Computer Implemented Inventions. The provided suggestions for describing such inventions:Hardware
Are important elements: processors, memories, interfaces, displays and peripheral devices described?
Is the interaction with the network described?Software
Does the patent describe: Steps to be performed Sequence to steps Processes and algorithms Interface
Data Does the patent describe the source and form of input data? What is the flow of data? How does software manipulate or modify data?
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CanadaCont.d
Software Claims – Distinctions without Differences??MOPOP
Acceptable: A computer program product comprising: a memory having computer readable code embodied therein, for execution by a CPU for [list a specific function], said code comprising:[list code means]
Unacceptable: A computer program for [list a specific function] comprising:[list code means]
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Where’s the dividing line?20
Hardware Software control system
software
Data Structures
Represent a physical implementation of a data model for organizing and representing information which is used by a computer program
The physical organization is responsive to the attributes of the data rather than specific content
E.g. MP3, customer database, or DVD data structure: organized and linked compressed video data portions having an indexing system or interface such as chapters, pointers, etc. to access particular portions of the video;
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Data Structures – U.S.A.
In re Lowry (1994)
data structure of database was patentable
dictated how application programs managed information; allowed the computer to operate more efficiently
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Data Structures – Canada
No case law
CIPO Guidelines support patentability
Claimed as a product
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Signal Claims
A signal is data or information briefly transmitted
It is not stored in memory.
E.g. Data communicated over the internet
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Signal Claims Cont.d
In Re Nuijten (500 F.3d1346, Fed. Cir. 2007.) A signal, standing alone, is not patentable.
A new method of watermarking (adding data listener cannot hear to an audio file, but which can be detected by computer)
Court held Manufacture must be tangible
“Transient” or “fleeting” inventions are not patentable.
The claimed signal is devoid of any semblance of permanence during transmission.
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Signal Claims Cont.d
Contrast to:
Chemical claims, where a fleeting “intermediate” produced in a chemical reaction is patentable.
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Signal Claims Cont.d
But Claims patentable for:
method to watermark signal (add the inaudible data)
Device to watermark signal
Storage medium containing watermarked signal
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Signal Claims Cont.d
Signals – Canadian Manual of Patent Office Practice
The following claim would be acceptable:
A carrier wave embodying a computer data signal representing sequences of statements and instructions which, when executed by a processor cause the processor to [list a specific function], the statements and instructions comprising the steps of:
[list steps of method]
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Where’s the dividing line?29
Hardware Software control system
software
data structure
Business Methods – U.S.A.
State Street Bank v. Signature Financialdata processing system for administering mutual funds
hub and spoke method
calculated final share price = useful, concrete & tangible result
was patentable
there is no “business methods” exclusion to patentability
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Business Methods – U.S.A.Cont.d
Business Methods (Revisited)In Re Cominskey (499 F.3d 1365 (Fed. Cir. 2007)
A method for mandatory arbitration, including the steps of: enabling a person to enrol;
Providing arbitration language;
Conducting arbitration resolution;
Determining an award or a decision that is final and binding
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Business Methods – U.S.A.Cont.d
Court held this was not patentable Although the Patent Act says processes are
patentable, the term “process” should not be read literally.
Idea or algorithm cannot be patented, even if it has practical application.
Routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima face case of obvious.
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Business Methods – U.S.A.Cont.d
In contrasts, earlier decisions held:
That methods are patentable some step scould be carried out with a human mind; or,
Even where a person performing the method had to think.
(A.T.&T. Corp. v. Excel (Fed.Cir, 1999))(In re Musgrave (1970))
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Business Methods – U.S.A.Cont.d
In re Bilski (2008)Claim for a method of hedging risk in the field of commodities trading:
Claims were admitted to not be limited to operation on a computer.
Is the process: Tied to a particular machine or apparatus? Transforms a particular article into a different state?
Producing useful, concrete and tangible resuls insufficient.
Held to be non-patentable subject matter
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Methods of Doing Business - Europe
Per se, not patentable
Point of invention requires technical character
If the invention relates to a new or improved manner of conducting business, not technical so not patentable
If the invention can be characterized as having technical character and makes a technical contribution – improved processing technique for example, then may be patentable
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Canada
Progressive Games, Inc. v. Canada (Comm. Patents) (2000) 9 C.P.R. (4th) 479 (F.C.A.) affirming (1999) 3 C.P.R. (4th) 517 (F.C.T.D.)
Method of playing poker
Is shuffling cards an “art”?
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Approach of the Canadian Intellectual Property Office Re: Application 564,175 to Atkins, Sep.
1999, (Comm. Patents) Post Motorola Applicant substitutes a computer
programmed in a specific manner to make decisions which were formerly made by a financial advisor - professional skill
An operation which is not patentable when carried out by an individual cannot be made patentable merely by having it carried out by a computer
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Professional Skills Not Patentable
The exercise of professional skill is not patentable but invention may lie in systems for subdividing land. A complete description of the hardware, software and data structures and the interactions with the data will go a long way to establish patentable subject matter in a computing application. A full description of the hardware, program and data components in an integrated system, and an amended claim 12 defining the inventive features of the computer implementation of the method, may elevate the subject matter from a mere method belonging to a professional field into an art, process or machine of section 2 of the Patent Act.: Manual of Patent Office Procedure
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Approach of the Canadian Intellectual Property Office Cont.d
Re Patent App. No. 2,203,302, Dec. 9, 2004 (Comm. of Patents) – Rankin Research Corp.
Vehicle tracking system using a cellular network to track a stolen vehicle.
Rejected by Examiner for requiring human intervention
PAB concludes human intervention limited to steps which are of a routine nature and do not require a high degree of training, judgment and decision making are permissible
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Where’s the dividing line?
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Hardware Software control system
softwaredata
structure
Business methods
Closing Thoughts
Guidelines do not have the force of law “This manual is to be considered solely as a guide, and should not be quoted as an authority. Authority must be found in the Patent Act, the Patent Rules, and in decisions of the Courts interpreting them”
How much of this is a de facto obviousness analysis?
What is the law in Canada, when there is so little law in Canada?
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