[d@DCC] Schlumberger Canada v. Comm. of Patents

From: Jason Young <jyoung _-at-_ lexinformatica.org>
To: General Discussion <discuss (at) digital-copyright.ca>
Date: Fri, 4 Jul 2003 16:40:11 -0400
References: <Pine.LNX.4.44.0307041602500.16417-100000@calcutta.flora.ca>

Hi Russell,

This is the proper redbook cite (for your report) and the Federal 
Court of Appeal decision. Leave to appeal to the Supremes was refused.

Generally, you would be able to find a decision of like this on 
CanLII <http://www.canlii.org> for free, but since this one's a 
little older, you would have to go to pay databases or caselaw 
reporters at your local law library.

Schlumberger Canada Ltd. v. The Commissioner of Patents, (1981) 56 
C.P.R. (2d) 204 (F.C.A.) leave to appeal to S.C.C. refused (1982) 63 
C.P.R. (2d) 261, online: Digital Copyright Canada Mailing List 
<http://www.digital-copyright.ca/discuss/1961> (date accessed 4 July 
2003).

Decision: Appeal dismissed.

Facts: The appellant has developed a mathematical formula, and a 
process using such in conjunction with a computer and with certain 
geological information for the purpose of predicting the presence of 
underground deposits of oil and natural gas. This process has 
improved considerably upon the previous "hit-and-miss" method. A 
patent for the process was sought but rejected.

Reasons: The Patent Appeal Board recommended that what the appellant 
was doing was claiming a monopoly on a computer program and that such 
could not be considered an "invention" within the Act. The appellant 
contends that this is a false characterization of the invention. The 
appellant's version of the invention is set out. There is no reason 
for saying that the matter is not an "invention" within the scope of 
s. 2 of the Act, for an "invention involving computers" is not 
excluded therein. However, it must be determined what "has been 
discovered". There is nothing new in using computers to make 
calculations prescribed by specifications; it is their precise 
purpose. What is new here is the discovery of the "various 
calculations to be made and of the mathematical formula to be used in 
making..." such. A mathematical formula - a "mere scientific 
principle or abstract theorem" - is not patentable (s. 28(3)). 
"Mental processes" cannot be equated with the word "process" as used 
in s. 2. But the appellant contends that the calculations are not 
"mental operations" but purely mechanical steps toward the final 
process as envisaged in the invention. This cannot be so, for if it 
were, the mere invention of computers would have the effect of 
rendering patentable that which would not have previously been 
patentable, and a "new dimension" would have been given to the Act. 
In the present case the mental process would not be patentable by 
itself; the additional factor of the use of a computer does not serve 
to convert it into an "invention" within the meaning of s. 2. 
(Decision: unanimous).

At 16:11 -0400 03.07.04, Russell McOrmond wrote:
>   One of the things I noticed while doing my patent report
>http://www.flora.ca/patent2003/ is that while I could read case history
>from the USA and the EU, that it wasn't so easy with Canada.  The report
>is references with Internet links except for one (Toward a Doctrine
>of Fair Use In Patent Law, by Maureen A. O'Rourke), and I never found any
>references for Canadian case history.
>
>   I am looking for something that I can freely link to in articles, not a
>fee-for-use reference that would put anyone reading my report into the
>same position of not being able to easily read the reference (Yes, I am
>asking for Free/Libre and Free/Gratis access to case history).
>
>   I am wondering if I just didn't find the right site, or if it really is
>the case that things are not online.  For instance, one case I wanted to
>read is:
>
>Schlumberger Canada v Com. of Patents
>   63 C.P.R. (2d) 261 (S.C.C.) 1982
>   56 C.P.R. (2d) 204 (F.C.A.) 1981
>
>   Not being a legal student, I don't really even know what the reference
>information means other than the dates.
>
>
>   When I type in "Schlumberger Canada v Com. of Patents" into Google I can
>find other reports (primarily legal analysis rather than economic/public
>policy analysis) that reference the case, but not a copy of the
>judgment(s) from the case itself.
>
>   Any help greatly appreciated.  While it is too late for this version of
>my report (and presentations to ICT branch next week), I am in this for
>the long-haul and expect to be doing further such analysis in the future.
>
>---
>  Russell McOrmond, Internet Consultant: <http://www.flora.ca/>
>  Governance software that controls ICT, automates government policy, or
>  electronically counts votes, shouldn't be bought any more than
>  politicians should be bought.  -- http://www.flora.ca/russell/
>
>--
>For (un)subscription information, posting guidelines and
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