Multi-jurisdictional Patents…Easier said than done. – by “Misbah U”

Today, the internet, media and telecommunications in general have not only allowed for instant collaboration worldwide, but have also accelerated the process of breaking down cultural barriers. Just as the back of my iPhone says “Designed by Apple in California. Assembled in China,” software products, too, are often designed and architected in one country, further developed in another, and then available for sale worldwide. Hence, being able to have patents filed in multiple jurisdictions has become increasingly useful and crucial for companies.

In a perfect world, one would be able to draft a patent with one set of claims, regardless of the jurisdiction of where it was submitted. In reality, however, it’s not so easy. This approach usually leads to nothing more than confusion and frustration. For example, claims drafted according to the United States’ best practice guidelines will usually have a difficult time evading step objections present with the European Patent Office (EPO), while those drafted for the EPO will also have difficulties with the United States when it comes to nuances surrounding patentable subject matter or language. As for Canada, I don’t think it’s quite clear yet as to which of these approaches (if either) would serve best, simply because of the uncertainties around what is even patentable there (i.e. recently, while Bilski v. Kappos reaffirmed software patentability in the States, while Amazon v. Canada raised questions around whether a “business method is patentable”).

Technically, software and business methods aren’t unpatentable in the United States. Originally the process was required to pass the following test (2008) of either being 1) “tied to a particular machine or apparatus”, or 2) “[transforming] a particular machine or apparatus.” However, in rejecting this “machine or transformation test” as the sole criterion, the Supreme Court (Bilski) opened room for interpretation in terms of defining “process” and what counted as an unpatentable “abstract idea.”

Interestingly, in Europe, the EPO has a stricter approach (based on the European Patent Convention, or EPC) when it comes to software and business patents. According to them, claims must:

  1. Have technical character and solve a technical problem.
  2. Be new.
  3. Involve an inventive technical contribution to the prior art.

For the “inventive step” specifically, the claim should solve “a technical problem using technical means” (epo.org source). Because of this, they also usually prefer that applications be written in a problem-and-solution approach, whereas United States applications want people to focus less on extraneous details.  Furthermore, although in Article 52(2) the EPC explicitly excludes “programs for computers, and presentations of information,” Article 52(3) serves as an exception to this exception (“the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”) and has therefore allowed thousands of software patents (and software-related business patents) to have been passed (source).

In Canada, as mentioned above, the Canadian Patent Act generally outlines the criteria for the claim to be “any new and useful art, process, machine, manufacture, or composition of matter…or any improvement thereof” (source). In Amazon v. Canada, the claim at issue was Amazon’s “1-click” ordering system and the CIPO’s Patent Appeal Board had upheld its initial rejection of this. Ultimately, they had applied a machine or transformation like approach in forming their decision deeming it unpatentable. The Canadian Federal Court, upon review, however, disagreed with this and cited the United States’ Supreme Court’s decision in Bilski—essentially conveying that Canada’s Patent Act had too restrictive of a view.

Thus, for the time being, I think it’s important for companies to a) have an extensive background on the various nuances for patent applications based on which jurisdiction(s) they are looking into applying for, and b) therefore draft multiple sets of claims in order to obtain multi-directional patent protection. Based on whichever application is filed first (United States or EPO, for example), the applicant would be able to prioritize filing U.S. style claims, and later EPO, or vice versa. Because of the disparity between United States and EPO criteria, having separate claims for each jurisdiction makes the most sense if one wants to avoid issues associated with having submitted one set of potential patent claims in multiple jurisdictions. Moreover, I think if Canadian law changes anytime soon, then showing support from both the US Patent Office, and the EPO can only help.

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