In an increasingly digital world, many of our greatest, most impactful innovations are rooted in software. Of course, here in Canada, like in the vast majority of countries around the world, we have a mechanism for encouraging and rewarding innovation: the patent system. The patent system offers monopoly rights to inventors in exchange for the disclosure of what it is they have invented – often times, these inventions are improvements made to existing devices, methods and processes. Software, however, despite its ability to enable previously unattainable feats, as well as its practical usefulness in everyday activities, and the benefit software innovation brings to society, has historically been challenging subject matter for which to obtain a patent.
The primary obstacle to patenting software has been whether the software product for which a patent is being sought qualifies as an “invention” within the meaning of the Patent Act. The requirement that an invention constitute eligible subject matter for a patent is just one of multiple requirements for patentability in Canada. Over the years, the Canadian Intellectual Property Office has clarified the circumstances under which software will be patentable, and the claims drafting strategies patent agents can use to ensure that the subject matter of a patent application is in fact patent eligible. This is just one of many reasons applicants for patents are encouraged to retain patent agents to draft and prosecute their applications.
In short, a software invention may be claimed in a patent application by directing the claim to a physical memory storing the computer program – a physical memory falls within the scope of “invention” as defined by Canadian patent legislation. Further, the software should be defined as being machine-executable code. If a patent application fails to appropriately claim a software invention, amendments to the application may remedy certain defects, but there is a considerable risk that a defective application will limit the scope of the monopoly ultimately granted to the inventor, preclude the grant of a patent for the invention altogether, or substantially lengthen the patenting process. As it often takes more than 18 months to obtain a patent in Canada in the most straightforward of cases, and recourse for what would be infringing activities is limited during the period pre-grant, inventors of software products are urged to consider representation by patent counsel.
Of course, an invention constituting eligible subject matter is just one hurdle on the road to obtaining a Canadian patent. In addition, an invention must be novel, non-obvious (or, inventive) and useful. For the most part, the first two present the biggest challenges to applicants. For an invention to be novel, it must not have been previously publicly disclosed – period, full stop – except in limited circumstances. Which means any public disclosure of the invention anywhere in the world can prevent you from being granted a patent for your invention. For an invention to be non-obvious on the other hand, the invention, although not disclosed piece-for-piece in a single document, for example, must also not be obvious in view of multiple disclosures which between them describe each aspect of the invention. For example, if a pencil with an eraser on the end is new, but erasers have been publicly disclosed and pencils have been publicly disclosed, it must not have been obvious to combine the eraser and the pencil to arrive at the invention.
It is important to be conscious of these requirements when developing and sharing your invention if you intend to apply for a patent in the future. Even your own disclosure of your invention can be damaging to your eligibility for a patent. If you plan to discuss your invention with others before filing a patent application, you may want to consider requiring those to which you disclose the details of your invention to sign a non-disclosure agreement. A non-disclosure agreement requires the individual to keep certain information confidential. Although substantially preferable to taking no measures to protect the secrecy of your invention, a non-disclosure agreement does not guarantee that your invention will remain secret and thereby potentially patent-eligible. If the agreement is broken, legal recourse is available as against the individual, but nothing can put the genie back in its bottle, so to speak. Your ability to obtain a patent may be irreparably impacted.
Taking steps to maintain the confidentiality of your invention is one small but critical step toward obtaining a patent for your software-based invention. A second step is to consider hiring an experienced patent professional to draft and prosecute your patent application. Working with a patent agent can not only help expedite the process, but also increase your odds of being granted a patent at the end of it. Finally, remember that the process is a long one. Don’t delay, protect your intellectual property today.