Michelle Mao is an incoming 2L student at Osgoode Hall Law School and an IPilogue writer.

The IP principle that abstract ideas cannot be patented has often been misapplied to the development of software, often boiling down to concluding software to be unpatentable. However, which parts of software are patentable, and which parts are not? The short answer is that while lines of code are not patentable, software can be patentable if it is useful and can be susceptible to commercialization.

°ä˛ą˛Ô˛ą»ĺ˛ąâ€™s and the (“MOPOP”) both  guide the (“CIPO”) in issuing patents. Applicants must meet certain requirements for a software patent to be issued. . First, several of patentability must be met, including novelty, non-obviousness, and being of a patentable subject matter. Second, additional criteria often apply to software-related inventions, including needing to have a on the real world or needing to be operated through a , such as a computer.

The above criteria are rooted deeply in the principles of IP law, specifically that abstract ideas, functions, scientific principles, or abstract theorems cannot be patented – as codified in . Those criteria protect the objective of IP law, which is to compensate inventors for innovative ideas while preventing barriers from being created as a result of patenting ideas and basic building blocks that are essential to innovation.

Given all these requirements, it is not hard to see how the misconception that software is not patentable arose – with software seeming like an intangible collection of code performing certain functions. However, with the immediate and ever-increasing utility of computer-based applications, new software patent applications very often meet the criteria of usefulness and novelty, allowing most software patents to be eligible.

Interestingly, a large tech company in 2011 almost failed to adequately define its software patent application. In , Amazon tried to patent a “one-click” shopping feature to increase the speed at which a purchase can be completed. The case was positioned uniquely in the intersection of increasing utility, which fulfills a patent requirement, and an abstract idea, a business method. Originally, the Commissioner had rejected the patent for several reasons, one of which was the unpatentability of an abstract idea. The Federal Court of Appeal, however, found that business methods may be essential to a utility and the mere characteristic of a patent application to be part of a business method does not make it ineligible for patent.

Commercializing new developments in software has been an important concern as the tech sector continues to . Courts have treated the delicate balance between business methods, the features and functions of code, novelty, and protecting innovation carefully for the past several decades.

As of now, the courts have created enough case law to provide a stable guideline for CIPO in software patent applications. It is interesting, however, that statutory provisions dealing specifically with software patents have not been integrated into the Patent Act. Only time will tell whether this allows for flexibility as the tech sector continues to develop or causes continued confusion and debate.

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This fall semester, I had a ten-week internship at Xanadu Quantum Computing Inc. (“Xanadu”) as part of the Intellectual Property Law and Technology Intensive Program (“IP Intensive”). With a previous academic background in science and engineering, I went to law school knowing that I wanted to become an IP lawyer and be involved in legal matters that implicated technical issues. In addition, I have always been interested in the latest technologies and excited to hear about innovative ideas. Therefore, the high-tech company ranks first in my list of placement organizations. My experience at Xanadu meets and exceeds all my expectations. I have learned a lot of practical knowledge in intellectual property, technology, and business.

Xanadu is a scale-up company building a full-stack quantum computing platform based on photonics. Their hardware includes the chips that the company does all their own design, and these chips are based on silicon photonics. Xanadu also develops software and offers the Penny Lane, which is a premier quantum machine learning library for users to access the hardware from the company and all the other providers as well. The cloud platform of Xanadu is called Strawberry fields, and it’s built for quantum
developers to design, optimize, and utilize photonic quantum algorithms without the need for expert quantum knowledge. Xanadu has a growing IP portfolio, including granted and pending patents, licenses, copyrights, trademarks, and trade secrets.

The ten-week placement allows me to gain hands-on experience analyzing IP portfolios, drafting legal research memos, and connecting IP strategy with business goals. I found it was interesting to explore the IP strategies of different companies by investigating their patent features. Through the analyzing process, I have learned how different companies took different approaches in filing patents based on their sizes and business goals. Moreover, I developed my legal research and writing skills when investigating and summarizing IP strategies applied by major market players. I also reinforced my ability to keep organized when conducting legal research with a wide range of resources.

Additionally, I have learned the importance of combining the legal considerations with corporate operation and management, increasing the IP awareness of employees, and protecting the IP assets of the company. Furthermore, I was fortunate to have plenty of opportunities to learn new technologies and keep track of the latest innovations. It is rewarding to help protect innovative ideas and work with talents who have profound knowledge in their profession.

I worked closely with my supervisor David Asgeirsson, the partnerships and IP manager at Xanadu, and the patent lawyer Steven Cheng, an expert in IP prosecution and enforcement. They kindly allowed me to work on a flexible schedule so that I did not feel stressed when facing a 12-hour time difference with most of my colleagues. Meanwhile, they were always willing to answer my questions, provide insightful comments, and offer helpful suggestions. They helped me overcome the challenges in understanding the quantum computing theory, major technologies in this field, and Xanadu’s services and products. With their guidance, I entered a promising quantum world coupled with interesting IP issues.

Overall, my internship at Xanadu is one of the highlights of my law school journey, and I believe it will assist in shaping my future career in the legal profession. I enhanced my legal research skills, gained practical IP knowledge in an in-house setting, and built valuable relationships with legal and quantum computing professionals. I am so thankful to my supervisor and colleagues at Xanadu for their guidance and advice. I am so grateful to everyone at IP Osgoode for arranging this amazing learning opportunity. If you are interested in IP law, technology, and business, I would strongly recommend the IP Intensive and the placement with Xanadu.

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