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19 November 2007
On August 14 2007 the Canadian Intellectual Property Office (CIPO) issued a practice notice stating its position that electromagnetic and acoustic signals are not patentable subject matter in Canada. However, the practice notice confirms that the exclusion from patentability applies only to claims directed to signals in themselves and does not affect the patentability of methods, processes, machines or manufactures involved in the generation, transmission, reception or processing of signals.
This practice notice reverses the position expressed by CIPO in the February 2005 update of the Canadian Manual of Patent Office Practice, but generally follows recent developments in the United States. The US Patent and Trademark Office made a similar announcement in October 2005, and on September 20 2007 the US Court of Appeals for the Federal Circuit handed down its decision in In re Nuijten, holding that signal claims do not constitute statutory subject matter under Title 35 Section 101 of the United States Code (USC). As the definition of ‘invention’ in Section 2 of the Canadian Patent Act is virtually identical to that found in Title 35 Section 101 of the USC, the In re Nuijten decision is likely to strengthen CIPO’s position.
Nevertheless, the patentability of signal claims has not yet been adjudicated by a Canadian court. It is arguable that a signal claim falls within the statutory category of manufacture, despite its transitory nature. For example, consider a patented software program that is purchased and downloaded from a foreign server over the Internet in the form of signals. From a practical perspective, such a download is no less an article of commerce than a CD-ROM or other physical article of manufacture storing the program. It therefore seems likely that CIPO’s position will eventually be challenged before the Patent Appeal Board and possibly the Federal Court of Canada.
For further information on this topic please contact Jonas H Gifford at Smart & Biggar/Fetherstonhaugh by telephone (+1 604 682 7780) or by fax (+1 604 682 0274) or by email (firstname.lastname@example.org).
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