Applications Corresponding to USPTO Applications are Being Filed in Canada
Much has been written in recent years about the patentability of business methods in the United States. While it has been suggested that the famous State Street Bank decision has given rise to a flood of patent applications in the United States Patent Office, there has been little discussion of what effect this decision has had on patent filings in Canada.
The question is, should business method patent applications corresponding to applications filed in the United States Patent Office and elsewhere be filed in Canada notwithstanding the current position taken by the Canadian Patent Office that business methods are not patentable? According to a recent review of laid open applications listed on the Canadian Patent Office web site, it would appear that some applicants for Canadian patents are clearly answering this question in the affirmative.
Many business method patent applications being filed in Canada are classified under International Patent Classification (IPC) group G06F 17 which is defined as "electrical digital data processing; digital computing or data processing equipment or methods specifically adapted for specific functions." Subgroup 60 covers "administrative, commercial, managerial, supervisory or forecasting purposes."
A search of this subgroup reveals a large number of laid open patent applications relating to business methods. Each of these applications claims priority from an earlier filed application in the United States. The business methods described in these patent applications extend to subjects such as:
A method of managing incentive points for purchases;
A method of marketing products and services through a pyramid marketing scheme; and
A method of providing multiple discounts to a retail customer.
By contrast with some of the more publicized business method patents, the claims in these patent applications have nothing to do with the Internet, e-commerce, or even data processing. Instead, they relate to basic business methods not unlike those practised by companies throughout Canada every day.
As for the patentability of these methods, the Canadian Manual of Patent Office Practice (MOPOP) states that "subject matter that is only a scheme or plan, system of doing business, method of accounting or providing statistics, personality or I.Q. Test and the like is not considered to be within the scope of ‘invention’ as defined by section 2 of the Patent Act." Though there are no court decisions directly on point, Canadian jurisprudence holding that professional skills are not patentable in Canada have been cited in support of the proposition that business methods are likewise not patentable subject matter.
However, judging from the kinds of patents issued in IPC subgroup G06F 17/60, it appears that the sweeping statements in the MOPOP may not necessarily reflect current Canadian Patent Office practice. A recent patent search revealed that 114 Canadian patents have issued within this IPC subgroup. Arguably, many of these patents relate to business methods, though with claims that are drafted in such a way as to be acceptable to Canadian patent examiners.
Notwithstanding the stated position of the Canadian Patent Office, every organization should be taking a long, hard look at its business procedures (whether related to e-commerce or not) and mining them for possible patentable inventions. The policy of the Canadian Patent Office towards business method patents may change. Hopefully, with the increased demand for and interest in business method patents, the courts will soon address the issue directly. Companies should be filing applications to these kinds of methods in this country to ensure the priority of their claims should the law change before the applications are examined.
Elliott Simcoe is an associate with Smart & Biggar / Fetherstonhaugh in Ottawa.
Smart & Biggar is Canada’s largest firm practising exclusively in intellectual property and technology law. With offices in Ottawa, Toronto, Montreal, Vancouver and Edmonton, we offer a full range of intellectual property and technology law services. Related to Fetherstonhaugh through common partners, offices and personnel, we have a national and international reputation for the quality of our work and the calibre of our professionals.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
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