Digital Copyright Canada

On Fri, 4 Jul 2003, Jason Young wrote:

> 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.

  I read a summary of the Schlumberger case in the new draft Chapter 26 of
the Manual of Patent Office Practice (MOPOP)
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/mopop/mopop-e.html

  I was sent this draft chapter that is not yet published on their website
as part of the research for my patent report for ICT branch.
  http://www.flora.ca/patent2003/

Note: I didn't have time to read it to include commentary in my patent
report, so I am now publishing this very informal off-the-cuff summary of
my reading.  If someone has done analysis in this area, or wishes to 
comment on Canadian software patent policy or my report, please do so at 
the email address provided at the top of the report.

MOPOP details the two-step test to determine patentability:

"  a) What has been discovered according to the patent applisation?

As in any inventive field, this first step is for understanding the 
discovery as a whole including the claim limitations.

   b) Is that discovery patentable regardless of whether a computer is or 
should be used to implement discovery?

In order to determine whether the discovery relates to patentable subject 
matter, the use of a computer to implement the discovery shall not change 
the determination of the subject matter of the invention."

  The problem is, I'm also told by multiple sources that pure software
patents (discoveries that exist only because of the invention of a
computer) are being granted in Canada.  I don't have actual patents to
reference as I didn't find any online, and I don't want to be tainted by
software patents in the course of writing this report.

  Many of these cases end up having interpretations of the additional
words used by the judges, and not just the ruling itself.  For instance,
the 1981 Diamond v. Diehr decision has wording from the judges to suggest
that patentable subject matter in the USA should "include anything under
the sun that is made by man."  This was then used later to allow business
model patents in the USA, and is used by the USTR to try to impose this
interpretation worldwide in trade negotiations.

  My reading of CIPO's MOPOP draft chapter 26 suggests that Canada intends
to grant all types of information process patents.  This could be because
of thinking within CIPO, or it could be because of NAFTA chapter 17 which
some legal opinions have suggested impose the "anything under the sun that
is made by man" US interpretation of patentable subject matter onto Canada
http://www.nafta-sec-alena.org/english/nafta/chap-171.htm#A1709

  My reading of Chapter 26 is not as a manual for examiners to know how to
properly reject information process patents, but as a manual for patent
filers to know how to word an unpatentable information process such that
it will be interpreted by an examiner to be a patentable invention.

  If a process can be 'executed' entirely in the mind of a human, no
matter how long that process might take (speed of processing should not be
a determining factor in patentability), then the subject matter should not
be patentable.  This should exclude information process patents such as
all pure software patents and business method patents.

  If a patentable manufacturing process happens to contain software, then
that should remain patentable as a correct interpretation of
patentability.  In this case it is not the software that is being
patented, but the process as a whole.  If information processes from that
software are used in a different context (outside of that manufacturing
process) then this would not be an infringement on the patent for the
manufacturing process.

  A quick google search turns up the typical analysis from the
pro-sw-patent side (Patent lawyers, patent consultants, patent offices,
etc) which interpret patent law such that information process patents
should be granted.

  This is similar to the USA where it was not economists, public servants
or members of parliament that extended patentable subject matter, but
patent offices, patent lawyers and courts (sometimes specialized patent
courts).

  "Obtaining software patents: Canada Now Open for Business"
  http://www.kmblaw.com/article_07_99softpatents.html

  "Software Related Patents"
  http://www.shapirocohen.com/softpatents.htm

  "Software-Related Patents: Canada"
  http://www.jurisdiction.com/spcanada.htm
  http://www.jurisdiction.com/dmc0003.htm

  I believe the problem is a lack of clarity in the patent act which needs
modernization in the face of information process patents, with changes
following adequate public policy and economic analysis.  This is not an
area of public policy that can be left to trade negotiaters, patent
offices, or legal opinions of outdated patent acts that could not have
anticipated information process patents.

  I also believe there is a considerable problem with incorrect
interpretations in the examiner guidelines about the nature of computer
software as an information process.

  Under 26.05 of the CIPO MOPOP there is a list of claim categories, or
(my interpretation) ways of wording claims such that non-patentable
information processes appear to be patentable.

They have:
  "26.05.1 : Claiming the process

  Claims in this category define the process which takes place in the 
computer when the computer program is run.  The claim defines the data and 
the processing steps which are to be performed on the data. The following 
process claim defines a way of encrypting data for storage on a card."

  It then describes a pure software process which should be unpatenable, 
but they claim that it is patentable.

  If it is software within an overall process, then a claim is valid.  If
it is a process that is contained within software, then the claim should
be unpatenable.  In their example what is inventive is the encryption
method which is an information process, not the fact that there is a
storage card for the result.

  Use of the identical software method to store in any other card should
be understood as not an infringement of this method, but this is not how
such patents are being interpreted.

  "26.05.2
   Claiming the programmed computer

A computer which has been configured with a novel computer program is 
considered to be a different machine from the same computer when 
programmed in another way.   The actions performed in the computer are 
directed by the computer program.  The functional steps in the method 
claim have been replaced by functional components such as "means for" 
expressions to define the structural elements of the computer.
"

  Another version of the same pure software claim is given.

  I can't quite articulate just how offensive I find this section of
MOPOP.  What they are suggesting is that any 'programming' or 'training'
that a computer receives changes the nature of the machine.  This is
similar to saying that when a student goes to school that they should be
issued a new passport after each course as they are no longer the same
person.  In a philosophical sense there may be a tiny bit of truth to
this, but we don't think of a person as a new person when they receive
additional knowledge/training and thus should not do this for computers.

  The existence of a trained person within a manufacturing process does
not change the nature of the manufacturing process to make it
unpatentable.  That person and/or their knowledge does not itself become
patentable.  There may be non-disclosure agreements signed by an employee 
in relation to their training, but trade secret and other such laws are 
quite different from patent law.

  "26.05.3
  Claiming the computer program

  The third category of claims define a computer readable memory storing 
statements and instructions for execution by a data processing system to 
direct the system to function in a particular manner.  This type of claim 
is variously referred to as a computer readable medium claim, software 
claim, computer product or article of manufacture."

  This might as well be called the "Microsoft claim", or the claim that if
business models similar to those used by manufacturing are used to
create/distribute software (Software Manufacturing), that this renders the
result patentable as manufacturing.

  This seems to contradict Schlumberger which suggested that the existence
of a computer did not add to or subtract from patentability.  If someone
claimed an effort to educate/lobby/market/propagandize people into
believing a certain thing (a form of training) to be manufacturing
(Manufacturing Consent), does that make this social process patentable?

  It goes on with:
  26.05.3.a
  Computer program on a carrier

to take care of the situation where the patentable non-invention is not on 
a physical medium.

  26.05.3.b
  Computer program on a signal medium

  This is the web-services claim, that pure software existing on a network
without a defined physical medium is claimed as patentable.

  26.05.3.c
  Data structures

  This is another case where even copyright does not grant a monopoly, but 
with the right wording you can have a claim granted for a patent.

"  26.05.3.d
  Non-patentable media claims

A computer program stored on a computer readable medium does not render 
the program patentable if the subject matter is otherwise not patentable.  
For example, data or information such as molecular structure or music does 
not possess the processing functionality which is required for 
patentability.  These media claims carry only non-functional descriptive 
material which are not patentable."

  Given much of the claim to information process patentability exists in
the field of philosophy and not science, law or economics, I could easily
argue that music is also functional descriptive material.  Having a song
which causes humans to tap, sing along or change to a certain mood (make
them happy, sad, etc) is just as much of a legitimate information process
as a computer program/algorithm/etc which causes a computer to do various
things.

  Someone drew an arbitrary line in the sand to try to make computer
software seem somehow special or magical as a description of an
information process.

  We end up right back at the nature of what a computer is, what is math,
what is applied math/science, what is an invention, what is technical.  
The key questions is whether any form of expression of an information
process (training, education, computer software) whether in spoken
languages (english), in music or in a computer language (C, C++, C#)
should be granted a monopoly by an act of parliament that appears intended
only to apply to manufacturing.

  That expression of an information process should receive copyright
protection, with required fair dealing and other exceptions for things
such as interfaces, not patent protection.

---
 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/

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[d@DCC] Draft Chapter 26 of the Manual of Patent Office Practice (MOPOP)

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