Canada has been viewed as a jurisdiction that is not amenable to business method patents, however, there are indications that the Canadian Intellectual Property Office (CIPO) is adopting a more favourable stance to business method patents.
Business methods are often considered to fall under the term “art” in the definition of “invention” as set out in the Patent Act. The meaning of the term “art” was explored by the Supreme Court of Canada in Shell Oil.1 In that case, the Court stated that ““art” [is] a word of very wide connotation and … extend[s] … to new and innovative methods of applying skill or knowledge.”2 The Federal Court in Progressive Games3, a case that concerned the patentability of a modified poker game, appears to have interpreted Shell Oil as infusing the term “art” with requirements, such as novelty and obviousness, that are not related to subject matter per se. In Progressive Games, the Court determined that the game was not an “art”, in part, because the changes to the game “do not substantially modify the poker game as it exists nor do they create a new game.”4
In a recent Patent Appeal Board (PAB) case, at issue was an application that claimed systems and methods for performing group billings for cellular telephone plans.5 In rejecting the application, the Patent Examiner was careful to adopt the language of the Court in Progressive Games. Despite this, the PAB criticized the Examiner's objections and stated that “the proper assessment to be made in relation to patentable subject matter is to determine, apart from considerations of novelty, utility, and obviousness, … whether the alleged invention is encompassed by at least one patentable category under Section 2 of the Patent Act.”6 The PAB returned the application to the Examiner for continued prosecution.
Although the PAB appears to have completely rejected the Progressive Games analysis, it is important to note that, as a matter of law, the PAB cannot overrule a decision of the Federal Court. However, this decision along with two earlier PAB decisions of note,7,8 appear to signal a practical shift in how the Canadian Patent Office intends to apply existing law to business method patent applications.