Canadian Patent Office Rejects Claims Relating to Sound Signals

In the August 14, 2007 edition of the Canadian Patent Office Record, the Canadian Intellectual Property Office (CIPO) stated its position that electromagnetic and acoustic signals are not themselves patentable subject matter because they are forms of energy, which CIPO considers to be distinct from matter. CIPO relies on its position that an "art" or a "process" must produce a result or effect by a physical or chemical action. CIPO similarly rejects the possibility that such signals per se could be a "machine", a "composition of matter" or a "manufacture", each of which CIPO asserts requires a physical embodiment which it claims signals lack. (This position has no impact on the patentability of process or apparatus inventions where signals are generated, transmitted, received or processed). The decision represents a shift for CIPO. Prior to the decision, signal claims (for example, software embodied in a carrier wave) were permitted. The change has been the subject of criticism. In June 2007, in a letter to CIPO, the Intellectual Property Institute of Canada (IPIC) expressed its concern over this policy which it anticipated based on CIPO's interim policy of rejecting signal claims. IPIC views this as a major change, as signal claims have long been allowed in Canadian patents. IPIC argued that the Commissioner of Patents does not have the authority to reject signal claims in the absence of a Federal Court ruling, as this requires an exercise of discretion in the interpretation of Section 2 of the Patent Act that the Supreme Court of Canada has indicated that the Commissioner does not have (see, for example, Monsanto v Commissioner of Patents, [1979] 2 SCR 1108). Signal claims also have a long history in the United States, beginning with Samuel Morse's telegraph code which the US Supreme Court upheld as patentable subject matter in 1854 in O'Reilly v Morse, 56 US 62. However, the US Patent Office (USPTO) has also adopted the position, which seems to be at odds with prior US jurisprudence, that electromagnetic signals are not patentable. The USPTO position is based on essentially the same analysis, which distinguishes energy from matter, that CIPO has now adopted. Observers have pointed out that this position seems to be directly at odds with a fundamental tenet of physics for over 100 years as expressed by the iconic equation e = mc2. This issue is currently before the US Federal Circuit in the case of In re Nuijten, which concerns the patentability of digital watermarks, in which a decision is expected soon. For the CIPO announcement, see section 15 of: http://tinyurl.com/2ahusn For a discussion of the US position, visit: http://www.patentlyo.com/patent/2007/02/in_re_nuijten_p.html; and http://www.oblon.com/files/news/315.pdf For the USPTO interim guidelines addressing signal claims, see: http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm If you have further questions about this topic, you may wish to contact Michael Erdle, a partner of Deeth Williams Wall LLP, who is currently President of IPIC. Summary by: Tom Feather