Canadian Patent Serial No. 1 was granted in 1869 to William Hamilton of Toronto. The patent was for a machine having a piston and a valve working in tandem to measure liquid flow. Mechanical devices such as Hamilton's fluid meter are archetypal inventions. Indeed, the word "invention" typically brings to mind images of valves, pistons, gears — abuzz with harnessed kinetic energy. However, the legal definition of "invention" under Canadian law and the law of many other countries embraces a broad conception of patentable inventions that encompasses much more than mechanical devices. For example, an invention may lie in a method for selling the aforementioned devices. An invention may also lie in lifeforms or aspects of lifeforms such as their genes or cells. Inventors should be aware of the possibility of patenting inventions in these and other non-traditional forms.
In Canada, the starting point for considering whether or not something is an invention is the Patent Act, which defines an invention as "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter." Thus, as drafted, the Patent Act embraces a broad conception of invention. The Canadian Intellectual Property Office ("CIPO") and Canadian courts have relied on this definition to delineate the boundaries of patentable inventions, also commonly referred to as patentable or statutory subject matter.
A method for selling a product may be patentable under a category of inventions commonly called business methods, which relate to new methods of doing business, such as e-commerce, investment, insurance, etc. In Canada, business methods were long thought to be unpatentable, and business method patent applications were routinely rejected by CIPO on the basis that the applications covered non-statutory subject matter. However, in an October 2010 decision, the Federal Court of Canada ruled that business method patents were permissible in Canada, under appropriate circumstances.
This decision dealt with a patent application by Amazon.com for a method to allow customers to make online purchases using a single click. In its decision, the Court ruled that Amazon's method fell within the definition of an invention under Canadian law under the category of patentable "art" as it (i) was not a disembodied idea but was rather a method having practical application, (ii) was a new and inventive method of applying skill and knowledge, and (iii) produced a commercially useful result. Significantly, in arriving at its decision, the Court held that there was no general exclusion for business methods in Canada. Thus, it appears that following this decision, business methods may now be patentable in Canada.
With the advent of genetic engineering, questions relating to whether genetically-modified life forms are patentable inventions have been repeatedly raised. In the past decade, the Supreme Court of Canada grappled with these questions in two landmark decisions: the 2002 Harvard Mouse decision and the 2004 Monsanto decision. As a result, it appears that while so-called higher life forms are not inventions, lower life forms and certain aspects of higher life forms such as genes or cells may be patentable inventions.
In the 2002 Harvard Mouse decision, the Supreme Court of Canada considered a patent application by Harvard College for a genetically-modified mouse having particular value in cancer research, dubbed the "oncomouse." The Court rejected the patent application on the basis that the oncomouse, as a higher life form, possessed qualities that transcended its genetic materials and therefore was not a mere composition of matter. The Court thus concluded that the oncomouse did not fall within the definition of invention under the Patent Act.
While the Court declined to draw a clear distinction between higher life forms and lower life forms, CIPO has subsequently adopted the position that higher life forms are multicellular, while lower life forms are unicellular. On this basis, CIPO considers animals, plant and mushrooms to be higher life forms and thus not inventions. Similarly, CIPO does not consider seeds, fertilized eggs or totipotent stem cells to be inventions as they have the potential to develop into higher life forms. Conversely, CIPO considers bacteria, protozoa, viruses, certain algae, certain fungi, transformed cell lines, hybrid cell lines, and embryonic, pluripotent and multipotent stem cells to be lower life forms and thus patentable.
In the 2004 Monsanto decision, the Supreme Court of Canada considered the validity of a Monsanto patent for a modified gene to grow canola plants resistant to Monsanto's Roundup brand of herbicide, and a canola cell containing the modified gene. In this case, Monsanto sued a farmer who grew Roundup-resistant canola for patent infringement. The farmer defended, in part, on the basis that Monsanto's patent was invalid given the restriction against patents for higher life forms, as declared by the Court in the earlier Harvard Mouse decision. The Court acknowledged that a canola plant was a higher life form, but held that, notwithstanding the restriction against patenting higher life forms, Monsanto's patent was valid because it covered only genetically-modified genes and cells of the canola plant, and not the entire plant itself. Furthermore, the Court held that Monsanto was entitled to rely on its patent for genes and cells to restrain the farmer from growing canola plants containing those genes and cells. Thus, it appears that genes and cells of higher life forms may be inventions, and moreover, may be relied on in some circumstances to indirectly cover higher life forms.
This article has provided a brief survey of a few non-traditional forms of inventions, but this survey is by no means exhaustive. As technology advances, new forms of inventions continue to emerge. Meanwhile, jurisprudence and Patent Office practice adapt, sometimes slowly, to recognize new faces of innovation. Furthermore, while this article has focused on the scope of patentable inventions in Canada, the situation is similar in many other countries around the world. In some cases, the scope is even broader — for example, the oncomouse patent application rejected in Canada was granted in the United States. Inventors should be aware of the broad conception of invention provided in Canada and other countries, and be alert to the possibility of securing patent protection for their inventions, even if those inventions take non-traditional forms.
Jeffrey J. Kang, Toronto
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.