As with any invention, in order to be patentable under the Patent Act the claimed subject-matter of a computer-implemented invention must fall within one of the five categories found within the section 2 definition of “invention”, namely art, process, machine, manufacture or composition of matter.
A computer-implemented invention may be claimed as a method (art, process or method of manufacture), machine (generally, a device that relies on a computer for its operation), or product (an article of manufacture). Certain subject-matter relevant in the computer arts may not be claimed as such, including computer programs, data structures, and computer-generated signals.
Computer-implemented inventions falling within the category art are typically claimed as methods.
Many methods involve the use of a computer or an apparatus or device including a computer. A method that, on its own merits, would be considered non-statutory does not become statutory simply by virtue of some part of the method being carried out on or by a computer. The method itself, as a whole, must be a solution to a practical problem and must lie within a field of technology.
Claims to computer-implemented methods for playing games or creating works of art do not define inventions that belong to a field of technology and do not come within the definition of invention in section 2 of the Patent Act [see sections 17.03.09 (Games) and 17.03.07 (Fine arts) of this manual].
A method of controlling a computer’s operations so as to achieve a technological result,[277] in contrast, would come within the definition of invention in section 2 of the Patent Act. In such a method, the electronic processes within the computer are considered to satisfy the requirement that the method include (either explicitly or implicitly) at least one act performed by a physical agent upon a physical object, producing in that object some change of condition.
A computer program is not, by itself, statutory subject-matter. However, if the result of running the program on a computer is to provide a novel and inventive technological solution to a technological problem, then the program is viewed as modifying the technological nature of the computer as a whole. The program in such cases is not a discrete element of a claim to the computer.
On the other hand, where the computer program expresses a non-statutory method, the non-statutory method itself is not a patentable contribution, regardless of whether it is novel and inventive. The patentability of the computer claims in such cases will depend on additional elements defining how the computer is adapted to implement the method. These additional elements may or may not be novel and inventive, depending on their nature and complexity and the state of the art in programming at the relevant date. Where inventive effort is needed to enable a computer to implement a method in a novel way, a technological solution to a technological problem has been contributed.
An invention must be useful, in the sense of doing whatever was promised by the inventors. The utility of the claimed subject-matter must be established by demonstration or sound prediction, and this subject-matter must be operable to produce the promised result in a manner that is controllable and reproducible.
A computer is generally considered to be capable of reproducibly performing whatever operations its hardware and programming enable. The utility of a computer- implemented invention is not guaranteed by this fact, however. Even where the components of the computer are working as intended, the invention as a whole may require other elements for its proper operation.
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