Protecting software patents in Canada and the US; Similarities and differences

1. Patenting software
   • Patenting software in both Canada and the US can be complex: software patents in Canada and the United States face similar prosecution hurdles in the form of “Abstract Ideas” rejections.
     • It is typically harder to overcome this rejection in Canada than in the US.
   • Methods to avoid or overcome this type of rejection include:
     • Highlighting the utility/ functionality of the software - what technical problem is the software solving?
     • Tying the functionality of the software to the structural parts of the components that run the software:
       • For example, including the term “computer-implemented” in a patent claim is a common method for framing the software claims to highlight the invention’s role in acting on a physical element of a computer.
       • The “computer-implemented” inventions typically consist of machines that depend on computers for operation and a product or method of manufacture, process or art.
     • Describing how the software is a useful improvement on existing process and systems. For example, detailing improvements to the process or overall system in the form of speed and/or memory usage in data structures, computer programs and computer-generated signals.
     • Ensuring that the output is presented as repeatable and not based on human judgement.
   • Patenting software is desirable in circumstances where source code and object code are made available and can be rewritten or reverse engineered.

2. Copyrighting software
   • Software protection can be in the form of source code and object code that underlies all software as the instruction to execute the software.
   • The source code and object code are protected under copyright law as literary works due to the creative nature of writing and running a code.
   • Copyright law in Canada and the United States are equivalent in that both:
     • Offer automatic protection once a work has been completed and published and is enforceable during the duration of the author’s lifetime as well as 70 years after the death of the author.
     • Offer exceptions for archives and libraries for preservation and educational purposes among others.
   • You can license your copyrighted software to others, at cost or for free, if you want to share it with the public
   • Orphan Works: allows an individual to apply for a license from the Copyright board of Canada to license works where the author is not identifiable or locatable.
     • Not applicable in the US.
3. Trade secrets:
   • Software protection can be in the form of a trade secret through the secrecy of the functionality of the software.
   • Keeping software as a trade secret is important in circumstances where source code and object code aren’t available and can’t be easily rewritten or the functionality is not clearly or legally reverse engineerable.
   • The software trade secret protection is enforceable only as long as the software trade secret isn’t publicly available.
   • Protecting software with trade secrets requires stringent cybersecurity and employee knowledge of the risks involved is leaking the details of the trade secret.

Key considerations for Canadian companies:

• It is important to identify where the invention lies within the software to figure out the best method for protection.
• “Patenting your software can be tricky - best to consult a skilled patent practitioner with experience in prosecuting software-related patents, who may be able to identify an element of the software that is patentable,” says Warren Gies, IP Strategist at Stratford Intellectual Property

Additional information:

• For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States.
• For material relating to the export of goods to the US, please see the Doing Business in the United States webpage.
• For more information on going global with your IP, visit ca/export-ip