SR&ED and Software Patents: Identifying Novelty (Pt. 2 of 3)

SREDable work doesn’t start and end with SR&ED claims – the work performed should be sufficiently patented in order to ensure that the innovative work is protected. That’s why SR&ED Education and Resources has teamed up with David French LLB BEng PEng, an intellectual property lawyer turned patenting/IP educator with 35 years of professional experience.

Getting a patent is not as simple as having an idea and writing it down, nor is creating a new invention sufficient for obtaining a patent. The idea or invention needs to have some new, innovative element. But how is novelty defined? What resources are available to find out if your invention is in fact unique? What specific elements of your invention or idea must be novel? In this second installment of the software patenting series, these and other questions will be answered.

Note: if you’re wondering what software patents have to do with SR&ED eligible work, read the previous post that gives definitions and the scope of software copyright and patent law, as well as the competitive edge this can lend to your SR&ED-eligible work.

Patenting in Canada – Defining Novelty

As a point of departure, the Merriam-Webster dictionary defines novelty as “something new or unusual”.¹ While this definition shares some elements with the patenting definition, the key difference lies in the specific way in which the patenting definition must be applied. Before even setting the patenting process,  in motion a novel feature must be identified. Patents only cover applications, things or configurations that are novel. As stated in section two of the Canadian Patent Act, inventions i.e. works that can be patented are defined as: “any new and useful art, process, machine, manufacture or composition of matter” and improvements thereon.²

The art in preparing a patent application is to first identify an essential feature that is new and then define it in the context of a process that, overall, will also be new. It is extremely important to involve a patent attorney at an early stage so that they can identify the essence of an idea. At the same time, it should be a central objective to establish a definition that will assure that others cannot achieve the same, useful results of the process using another method that will fall outside of the definition–and therefore outside the protection–of the definition that has been generated. It is the responsibility of a patent applicant to specify the things and procedures that are thought to be new and which competitors are prohibited from imitating. However, if the specifications and definitions describe anything that was previously available to the public, it is rendered invalid and will be refused by a patent examiner or canceled by a judge even after the patent has issued. At the same time, it is critically important that the patent block competitors from competing. This is a collision of conflicting objectives, as meaningful patent coverage is often difficult to reconcile with the novelty requirement, and sometimes the novelty of an invention is so limited that it is not worth obtaining a patent.

The Difficulty of Patenting Software

In addition to identifying some feature that has the prospect of being new, the feature must also be useful. Otherwise, the time and effort required to patent the feature will be wasted. As stated above, only clearly identified and novel features can be patented. However, there may still be additional hurdles to overcome in order to obtain patent protection for software. The law thus far has been unclear as to the extent to which software inventions can be protected by patents. Software patents were non-existent at the time that the patent legislation was originally drafted. They have been integrated into the patenting system on the basis that software executes a process and a process is patentable if it produces a new and useful result. There has been some jurisprudential uncertainty over whether something tangible must be manipulated in order for a patent to be granted. Although the law is still grappling with this issue, there is a certain degree of leeway for patenting software today, providing that useful advance meets novelty requirements and involves some tangible effect. Generally, in the field of software three examples of functions that one might wish to protect include:

1. The actual way the coding works, e.g. checksum digits;³  improvements in calculation efficiency.
2. A logic flow manipulation, e.g. a video game presentation feature; how to play the stock market.
3. User interface functions, e.g. features of scrollbars; touch screen commands such as the “pinch”.

There’s considerable doubt as to whether a valid patent can be obtained in respect of the first two items listed above, apart from their inclusion in some hardware context.

Bottom Line: Do the Research

Since it would be futile to try to obtain a patent for a feature that lacks some novel element, the sensible first step in the patenting process is to conduct research into work others have previously done in the same field. Start the searching process by identifying a feature of the final product or process that you think is new. Keep in mind that you may have to modify this feature later on as you find examples of similar previous discoveries. The patents database of the Canadian Patent Office ⁴ is a good research to use in researching the novelty of your product or process. However, only abstracts and claims can be searched, and even only go back into the 1970s. A potentially more useful resource to start with is the US Patent Office,⁵  which offers full-text database searches dating back to 1976. The US patent office also allows citation searching, which can be extremely helpful. While it may seem counter-intuitive to search through US patents for a product or process you wish to patent in Canada, a significant portion of Canadian patents have been derived from foreign investors. Due to this, most Canadian patents are reflected by corresponding US patents. This means that searching through the US patent database will yield results that are essentially equivalent to those found in the Canadian database. There are some cases in which the Canadian database will prove more useful, but the searching tools of the US Patent Office are simply more user-friendly and offer more information, so it is wise to begin your search here. Ultimately, it is best to cast your research net as wide as possible to minimize the likelihood that your patent or process has already being invented or claimed by someone else.

This article is presented only for informational purposes and does not constitute legal advice. You should retain legal counsel if you require legal advice regarding your individual situation.

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About David: David French is a senior Canadian patent attorney with 35 years of experience. David is a graduate of McMaster University in Engineering Physics (1965) and of the University of Toronto Law School (1969). Having worked with Gordon Henderson after qualifying as a lawyer in 1971, David spent six years with the Canadian government working on law reform and international patent issues. Thereafter he has been practicing Intellectual Property law, eventually with the firm MiltonsIP in Ottawa, Canada. On January 1, 2010 David retired from regular practice at this firm to continue with his business. During his career, David has helped numerous firms and inventors obtain patent rights, trademark and design registrations, providing guidance on not only understanding Intellectual Property but appreciating how to make IP work effectively to serve a business’s interests.