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 CIPO’s
Changes to Patentable Subject Matter May Be Unlawful
Alistair Forster
In August of 2007, by way
of a Practice Notice and with little or no consultation with
the public or the intellectual property community, the
Canadian Patent Office formally expressed its position that
computer programs existing in a transitory state (i.e., signal
claims) are forms of energy that do not contain matter and
therefore do not constitute patentable subject matter under
section 2 of the Patent Act. What little commentary
there has been regarding this decision appears to have been
focused on whether or not the Patent Office is correct in its
assertion that signal claims are not patentable subject
matter. This, however, may not yet be the most relevant
consideration. Until this decision has been given due process
of law and the Patent Office provides Applicants an
opportunity to be heard, the most pertinent issue may be
whether the Commissioner has the jurisdiction to make such a
change.
The Patent Office has, until last
August, expressly given the public an expectation that signal
claims are considered to be patentable subject matter. Chapter
16 of the Patent Office’s Manual of Patent Office Practice,
commonly referred to as the MOPOP, continues to state that
signal claims are a patentable medium for computer-implemented
inventions. Additionally, it has in fact been the practice of
the Patent Office to allow patents containing claims to
computer media in the form of transitory or propagated
signals. The decision to alter from this position, which
coincidentally occurred shortly after the United States
Federal Circuit Court of Appeals made a similar decision,
appears to have been made with virtually no opportunity for
public comment.
As a result, a number of
Applicants may have lost significant property rights by
publicly disclosing what previously would have been a trade
secret, with what may now be an unrealized expectation that
they would obtain an enforceable patent right. It should be
noted that signal claims provide a meaningful way to prevent
potential infringers from avoiding liability by, for example,
initiating in Canada via the internet the execution of a
patented computer-implemented invention located on a server in
another jurisdiction and providing the results of that
execution inside Canada. Accordingly, an expectation, which
has been given both by express notice and by past practice,
that a signal claim constitutes patentable subject matter may
have been a significant reason for an Applicant to decide to
publicly disclose a proprietary invention.
Fortunately for such Applicants,
Canadian law may limit the discretion of the Commissioner of
Patents to alter what may and may not be patentable subject
matter. As there are Applicants who will lose property rights
by virtue of this decision, there are at least two ways in
which the authority of the Commissioner in this regard may be
fettered. First, the Common Law provides that, under certain
circumstances, decisions of legislative delegates require
procedural fairness, of which a major component is the right
to be heard. By making this decision summarily, with little or
no consultation and without providing her reasons, the
Commissioner does not appear to have met the onus of this
duty. Second, and perhaps even more persuasive, section 1(a)
of the Canadian Bill of Rights states in part that no
person may be deprived of property without due process of law.
The exact nature of due process in this circumstance may be
uncertain, but it very likely requires more than merely
issuing a public notice.
Whether signal claims are
ultimately deemed not to be patentable subject matter, any
decision to alter this position should give proper
consideration to both the rights and interests of Applicants,
as well as to sound innovation policy. Canadian law appears to
ensure this by requiring that such a decision, rather than
being made summarily by a government official, is in the least
reviewed by an authorized decision-maker, such as Parliament
or a member of the judiciary.
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June 2008 Newsletter
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