A-425-78
Schlumberger Canada Limited (Appellant)
v.
Commissioner of Patents (Respondent)
Court of Appeal, Pratte and Ryan JJ. and Kerr
D.J.—Ottawa, May 21 and June 15, 1981.
Patents — Appeal from a decision of the Commissioner of
Patents rejecting an application for a patent — Application
discloses a process whereby measurements of soil characteris
tics from boreholes are recorded on magnetic tapes, transmit
ted to a computer programmed according to the mathematical
formulae set out in the specifications and converted into
charts, graphs or tables — Commissioner held that the appel
lant was claiming a monopoly on a computer program which is
not an invention — Whether the application discloses a pat-
entable invention — Appeal is dismissed — Patent Act, R.S.C.
1970, c. P-4, s. 2.
APPEAL.
COUNSEL:
D. A. Hill and L. Webster for appellant.
A. Fradkin for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
PRATTE J.: This is an appeal from a decision of
the Commissioner of Patents rejecting an applica
tion for a patent made by the appellant.
The purpose of the alleged invention is to facili
tate the exploration for oil and gas. That explora
tion is normally made by drilling boreholes
through the geological formations thought likely to
contain hydrocarbons and by passing instruments
up and down those boreholes to effect various
measurements of the characteristics of the soil. For
reasons that need not be explained here, those
measurements are not always very useful to geolo
gists. However, the authors of the invention
claimed by the appellant have discovered that
those measurements may be combined and
analyzed so as to yield more meaningful informa-
tion. The appellant's application discloses a pro
cess whereby the measurements obtained in the
boreholes are recorded on magnetic tapes, trans
mitted to a computer programmed according to
the mathematical formulae set out in the specifica
tions and converted by the computer into useful
information produced in human readable form
(e.g., charts, graphs or tables of figures).
The Commissioner founded his rejection of the
appellant's application on the reasons stated by the
Patent Appeal Board in their recommendation.
That recommendation, as I understand it, was
based on the view that the appellant in effect
claimed a monopoly on a computer program and
on the further view that such a program, even if it
were new and useful, is not an invention within the
meaning of section 2 of the Patent Act, R.S.C.
1970, c. P-4.'
The appellant attacks the decision of the Com
missioner on the ground that it is based on a false
characterization of the invention claimed. Accord
ing to the appellant's counsel, the invention
claimed is not a mere computer program, it is a
process whereby a series of calculations are per
formed mechanically so as to extract useful infor
mation from some measurements. In order for the
invention to be put into practice, it is, of course,
necessary to program computers. But the inven
tion, it is said, is not the computer program, it is
the complex process, which is effected by comput
er, of transforming measurements into useful
information. As the Patent Act contains no provi
sion specifying or even implying a limitation of the
meaning of the word "invention" in section 2 of
the Act so as to exclude inventions involving com
puters, there does not exist any reason for saying
that the discovery claimed by the appellant,
assuming it to be new and to have required inven
tive ingenuity, is not a patentable invention within
the meaning of section 2 of the Act.
' Section 2 of the Act provides that:
2. In this Act, and in any rule, regulation or order made
under it,
"invention" means any new and useful art, process, machine,
manufacture or composition of matter, or any new and
useful improvement in any art, process, machine, manufac
ture or composition of matter;
In order to determine whether the application
discloses a patentable invention, it is first neces
sary to determine what, according to the applica
tion, has been discovered. Now, it is obvious, I
think, that there is nothing new in using computers
to make calculations of the kind that are pre
scribed by the specifications. It is precisely in
order to make those kinds of calculations that
computers were invented. What is new here is the
discovery of the various calculations to be made
and of the mathematical formulae to be used in
making those calculations. If those calculations
were not to be effected by computers but by men,
the suject-matter of the application would clearly
be mathematical formulae and a series of purely
mental operations; as such, in my view, it would
not be patentable. A mathematical formula must
be assimilated to a "mere scientific principle or
abstract theorem" for which subsection 28(3) of
the Act prescribes that "no patent shall issue". As
to mental operations and processes, it is clear, in
my view, that they are not the kind of processes
that are referred to in the definition of invention in
section 2. However, in the present case, the specifi
cations prescribe that the calculations be made by
computers. As a result, as I understand the appel
lant's contention, those calculations are not mental
operations but purely mechanical ones that consti
tute the various steps in the process disclosed by
the invention. If the appellant's contention were
correct, it would follow that the mere fact that the
use of computers is prescribed to perform the
calculations prescribed in the specifications, would
have the effect of transforming into patentable
subject-matter what would, otherwise, be clearly
not patentable. The invention of the computer
would then have the unexpected result of giving a
new dimension to the Patent Act by rendering
patentable what, under the Act as enacted, was
clearly not patentable. This, in my view, is unac
ceptable. I am of opinion that the fact that a
computer is or should be used to implement discov
ery does not change the nature of that discovery.
What the appellant claims as an invention here is
merely the discovery that by making certain calcu
lations according to certain formulae, useful infor
mation could be extracted from certain measure
ments. This is not, in my view,,,an invention within
the meaning of section 2.
For those reasons, I would dismiss the appeal.
* * *
RYAN J.: I agree.
* * *
KERR D.J.: I agree.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.