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Signalling your Invention in Canada

February 2008

In many inventions relating to telecommunications or computers, the underlying novel idea resides in the modification of a signal to achieve some useful purpose. An example can be found in US patent application no. 09/211,928, which relates to the introduction of “watermarks” into signals to help protect media against unauthorized copying. Consistent with the general desirability of protecting an invention in its most basic form without limitation to any specific apparatus or method of implementation, the applicants sought to protect their underlying invention in the form of a claim directed to a signal, wherein the body of the claim defined the novel and useful characteristics of the signal. The US Federal Circuit, In re Nuijten, 84 USPQ 2d 1495, with a dissenting opinion, held that such a claim was not a “process, machine, manufacture, or composition of matter”, as required by US law, and as such was non statutory subject matter.

The Canadian Patent Office previously took the view that a medium that exists in a transitory state may embody patentable subject matter, and in particular gave as an example of a patentable claim, a claim directed to a carrier wave embodying a computer data signal. Possibly, with one eye on developments in the United States, in a practice notice issued last August, the Canadian Patent Office advised that it had revised its previous position and notwithstanding any earlier pronouncements on the topic, it would no longer consider such claims patentable as such signals “are forms of energy and do not contain matter” (Einstein may not have agreed with this statement, but that is another issue).

The Canadian definition of patentable subject matter is similar to that provided in US law, with the additional provision that patentable subject matter may relate to a “useful art”. In Shell Oil Co. v. Commissioner of Patents, 67 C.P.R. (2d) 1, the Supreme Court of Canada held that the term art was a word of very wide connotation and “extended as well to new and innovative methods of applying skill or knowledge provided they produce effects or results commercially useful to the public”. In the United States, the Federal Circuit agreed that the claims required some physical carrier, and were therefore directed to some unspecified by nevertheless tangible medium, but held that because the signals only existed in transitory form, they did not constitute a manufacture and were therefore non-statutory. While the latter point is debatable, as illustrated by the dissenting opinion, the US court did not have to consider the question of whether signals might also fall under the definition of “art”. Given the expansive definition urged by the Supreme Court of Canada in Shell oil supra, and the clear commercial value of the effects produced by such signals, it is difficult to see how the Patent Office position can be justified under the current caselaw. We will have to await a definitive decision from the Patent Appeal Board, and eventually the Courts, to see whether this position is sustained.

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