Software Patent

June 20, 2022
Photograph of three baseballs on the grass, representing three strikes.

Three Strikes: Federal Court Rejects CIPO’s Approach to Software Patent Eligibility

2022 FC 923: For the third time since 2011, CIPO’s approach to software patent eligibility has been struck down by the Federal Court.
February 24, 2022
Photograph of a computer user typing on a laptop

Courts Must Consider Patent Examiner’s Interpretation of Claims

The US CAFC ruled that an examiner is a "person of ordinary skill in the art" and is owed an appropriate level of deference.
November 15, 2021
Photo of computer screen showing a code editor.

Landmark Graphics Benefits Again From PAB’s Post-Choueifaty Approach

2021 CACP 42: Cementing its post-Choueifaty approach to patentable subject-matter in Canada, the PAB found all claimed elements to be essential in the computer-implemented invention.
November 2, 2021
Photo of a hand holding a credit card above a laptop keyboard.

Apple and Visa Persuade Federal Circuit to Invalidate Patents for Secure-Payment

Fed. Cir. No. 2020-2044: The Federal Circuit found that the patents were directed to an abstract idea, with no additional elements to transform them into patentable subject-matter.
July 7, 2021

CAFC Invalidates a Camera Patent, Blurring Lines in the Patent Eligibility Inquiry

Fed. Cir. No. 2020-1760: The CAFC sided with Apple and Samsung, finding a patent for an “improved” digital camera to be an abstract idea and not patent-eligible subject matter.
June 7, 2021
Close up view of a green circuit board for a computer

PAB Allows Two Software Patents, Revealing Post-Choueifaty Approach

2021 CACP 9, 2021 CACP 12: In two recent decisions involving software patents, the Patent Appeal Board found the inventions to be directed to patentable subject-matter
February 16, 2021
Close-up photograph of server with multiple ethernet cords plugged in

Patent Appeal Board Rules Choueifaty Patent Application to Be Patentable

PAB 1556: Canada’s Patent Appeal Board reconsidered Mr. Choueifaty’s patent application for a computer-implemented method of managing portfolio assets.
November 2, 2020
Photograph of eyeglasses focusing on a computer screen displaying software code.

After Choueifaty: A New Test for Examining Software Inventions in Canada

Andrew Currier and Stephen Perry review best practices for drafting software patents to global standards and propose a new test for examining software inventions in Canada.
September 23, 2020
Lines of programming code on a computer screen.

Federal Court Rejects CIPO’s “Problem-Solution” Approach to Claim Construction

2020 FC 837: A recent decision spells the end to the problem-solution approach, which has long been used to block patent applications for software.
August 10, 2020
Macro photograph of a computer keyboard with black keys.

Infringer Uses Marking Requirement to Escape Pre-Suit Damages

Fed. Cir. 2019-2041 - The CAFC held that Packet Intelligence was precluded from claiming $3.5M in pre-suit damages because the marking requirement was not met.
December 9, 2019
The word blockchain surrounded by symbols of bitcoin, finances, mobile devices, money, computer networks.

Patenting Blockchain Technologies

Is patenting blockchain possible? Do patents detract from the decentralization of blockchain? This article explains the ins and outs of blockchain patents.
July 11, 2019
SCOTUS, the supreme court of the United States

US Supreme Court Asked to Resolve “Fundamental State of Disorder” in the Patent System

A cybersecurity start-up is asking the US Supreme Court to take a bold stance on the judicial treatment of patents and fix the US patent system.
July 8, 2019
Computer server, cables, fiber optic cables, electronics, hardware

Federal Circuit Reinstates Software Patents in Favour of Alleged Patent Troll

The CAFC reminds lower courts that software patents are valid where they claim a particular improvement in how the outcome is achieved.
October 17, 2017

U.S. Federal Circuit Deems Software Innovation is Patent-Eligible, But Not Infringed

2016 U.S. App. LEXIS 8699 (Fed. Cir. 2016) - The US CAFC reversed the decision of a district court in part, finding that the claims in a software patent were patent-eligible, and reversed the finding that the claims were anticipated, but affirmed the district court’s decision that there was no infringement.
October 5, 2016

Canadian Version of Alice Financial Services Patent Rejected for Lack of Statutory Subject Matter

PAB 1408 - The Canadian version of one of the computer-implemented financial services patent applications from the famous U.S. case on software patent eligibility, Alice Corp v CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), was rejected for lack of patentable subject matter.
September 30, 2016

Software and Data Analytics Patents still a Challenge in Canada

PAB 1407 - The PAB rejected the computer-implemented data analytics patent application of Canadian Patent Application No. 2,798,566, entitled “Identified Customer Reporting”, for lack of statutory subject matter, since no physical feature – no computing device – was found to be essential to the claims.
May 20, 2016

Software Patent Lines are Drawn: USPTO Comments on Enfish and TLI Communications Decisions

In the Enfish case, the Federal Circuit confirmed the patentability of a “self-referential” database invention as not being directed to an abstract idea under 35 U.S.C. § 101. In the TLI Communications, the Federal Circuit found a proposed invention of classifying and storing digital images using a telephone unit to be abstract.
June 30, 2015

Writing Provisional Software Patent Applications

In the age of the “Lean Startup” $100,000 can be enough to get a startup well off the ground. However, with such tight budgets and limited funding there is often not much room left to pay a professional patent agent several thousand dollars to draft your patent application. This article provides some pointers on how to draft your own provisional software patent application.
January 8, 2015

Commissioner Approves eBay’s Automated Email Notification Patent

Commissioner’s Decision # 1369 - Two elements of the invention were found to be inventive: (1) the “push” process for keeping status information up-to-date, and (2) the automatic notification system that automatically sends an email message only when a delivery status has changed.
December 12, 2014

UK Court holds email file transfer program is unpatentable subject matter

Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463 - The UK Court rejected a patent on a method of transferring files via email communication for unpatentable subject matter for being no more than a computer program.