Background
Patenting computer programs is an area which is rife with misconceptions. Many businesses are put off pursuing patent protection because they believe that the hurdles are insurmountable. These misconceptions are understandable because computer programs fall within a grey area of “excluded subject-matter” which covers technologies that seem like they should be patentable but are not. Other such grey areas include methods of medical treatment and business methods. Even the Canadian Intellectual Property Office has been guilty of over-simplifying the situation by stating in a Patent Basics sheet that “[s]oftware is considered a literary work and cannot generally be protected with a patent”. This is somewhat misleading because, in most countries, there are opportunities to patent at least some software-based inventions.
Difficulties
Having said that businesses should consider patenting software, prosecution of applications directed to computer programs is not always smooth. As with any “excluded subject-matter”, the advice you will receive from a patent agent is likely to be more nuanced than usual. This is because:
- The law in these grey areas tends to differ from country to country. For most aspects of patent law, the countries have worked together to harmonise their systems so that, for example, the level of inventiveness required in Canada is very similar to the level required in Europe or Japan. For software patents, this is not the case. Each country has its own interpretation of whether certain technologies are patentable.
- The law in these areas continually evolves. For example, in 2014 a major U.S. Supreme Court case (Alice Corp. v. CLS Bank International) made it much more difficult to patent computer programs in the U.S. About once a year since then, new court cases in the U.S. have adjusted how computer programs are treated. For an applicant (and its patent agent!) filing a patent application which will likely take three to four years before being examined, this introduces an extra degree of uncertainty because it is not clear whether the developments in the law will benefit or damage the applicant’s case.
Opportunities
Although there are difficulties, there are also opportunities to successfully protect certain types of computer programs. Below are some general indications of the current situation in Canada and the U.S.
In Canada, the excluded-subject matter hurdle can be cleared if a computer is essential to the operation of the technology. Therefore, if the algorithm can be executed manually, the exclusion hurdle can generally not be overcome. For example, software for organising a roster for employees may not be patentable, but a new method of encrypting employee data might be.
In the U.S., the United States Patent and Trademark Office prepared a helpful supplementary list of examples to show what is patentable and what is not. This list confirms that, if properly claimed, it is possible to get a patent for technologies such as:
- Rearranging icons on a graphical user interface (example 37)
- Adaptive monitoring of traffic data (example 40)
- Cryptographic communications (example 41)
- Updating medical records (example 42)
The patent system in each country continues to define and explain which aspects of software, and computer-implemented inventions more generally, are patentable. Engaging with a patent agent who works in the area of patenting computer-implemented inventions can help to navigate these issues. As well, if the patent application is strategically and thoughtfully drafted, this can greatly improve the chances of success.
For more information, please contact Will Murphy.