Can I Patent That?
What Exactly Is A Patentable Creation?
What is Intellectual Property?Before discussing patents specifically, it is helpful to first have a general understanding of what exactly is intellectual property (“IP”). IP, stated broadly, is a “creation of the mind”[i] and includes things like logos, inventions, literary works, and designs.[ii] IP is a type of intellectual asset which, though intangible, plays a crucial role in providing businesses with a competitive advantage so that they can succeed in today’s increasingly knowledge-based economy.[iii] As a result, it is important for entrepreneurs to be able to identify their business’s value-creating IP and understand how to protect it.
There are various forms of IP protection in Canada, with each form focused on protecting a specific range of subject matter. Patents fit into this Canadian IP protection framework as being the form of protection that can be used to protect inventions… provided that those inventions meet certain criteria.
Defining Patents: The Criteria for PatentabilityAs mentioned above, patents are the form of IP protection concerned with protecting inventions.[iv] Inventions are defined in the Patent Act[v] 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”[vi].
For an invention to be “new” it must distinctly demonstrate its novelty or ingenuity over a previous patent.[vii] This novel or ingenious use can includes a new use of an existing substance, such as discovering a new application for an existing drug.[viii] For a patent to be “useful” it must have a demonstratable utility or a sound prediction that it works at the time the patent application was filed. This can be a single or recurring use.[ix]
In addition to being new and useful, the subject matter of an invention must have not been obvious to a person skilled in the art or science to which the subject matter of the invention pertains at the time the patent application was filed.[x]
An Art is a broad category of subject matter which includes new and inventive methods of practically applying skills or knowledge to create commercially useful results.[xi] A Process is a mode or method of operation where the end product is produced from the application of physical or chemical action, element or power of nature, or of one substance to another.[xii] A Machine is a physical or mechanical embodiment of a process which, when used, can deliver a desired effect.[xiii] A Manufacture is the action or process of making articles or material through the application of physical labour or mechanical power.[xiv] And a Composition of Matter is a substance formed by a combination or mixture of various ingredients.[xv]
With these criteria of what constitutes a patentable invention in mind, lets now turn to some examples of subject matter that can fall within these parameters.
What Is and Is Not Patentable Subject Matter?If the subject matter of an invention meets the above the criteria, it is typically patentable. Consequently, patentable subject matter can range from door locks[xvi] to genetically modified cells[xvii]. However, there are some notable exclusions and areas of contention with respect to what can and cannot be patented. Some key examples of these are discussed below.
Unpatentable Subject Matter
Scientific principles and abstract theorems cannot be patented.[xviii] Moreover, creations of nature, like cross-bred plant species, cannot be patented since they are not deemed to have been invented by the discoverer.[xix] Presently, forms of energy such as electromagnetic and acoustic signals are not considered patentable either.[xx]
Broadly speaking computer programs are not patentable subject matter.[xxi] However, if the software is imbedded in a computer – such as in the form of algorithm tied to a physical, read-only computer chip – then it may be patentable.[xxii] It is also important to note that if a computer program is used to make an otherwise unpatentable discovery, the fact that a computer program was used to make the discovery does not change that unpatentable discovery into a patentable one.[xxiii] For example, the fact that a computer was used to discovery a new scientific principle does not make that scientific principle patentable.
Professional skills such as novel ways to describe and lay out land in a subdivision are also not patentable,[xxiv] nor are high life forms such as mice[xxv]. Medical and surgical methods are not patentable in Canada,[xxvi] however the medical products used in those processes can be patented.[xxvii]
Possibly Patentable Subject Matter
A business model can be patentable subject matter, however for a business model to be patentable it must meet all the criteria described in the above “Defining Patents” section and have physicality.[xxviii] This physicality requirement demands that the business model somehow physically exist beyond manifesting its usefulness through the application of a physical tool.[xxix] How this can be done exactly is not clear, however there is some United States case law which suggests that if a business model were imbedded in a software of some kind that it may be patentable.[xxx]
Alternatives to PatentingPatents are just one example of the intellectual property protections available in Canada. Copyrights, Trademarks, and Industrial Designs are other examples of other IP protection available in Canada. Protecting IP through keeping it as a trade secret is also an option for business, and is an IP protection strategy commonly used by start-ups and growth companies.[xxxi] As a result, if you cannot patent your invention, you may want to review the Clinic’s other blogs about IP or book an appointment with the Clinic to learn more about these other forms of IP protection!
Duncan Pardoe is a caseworker at the BLG Business Venture Clinic and a second-year law student at the Faculty of Law, University of Calgary.
[i] World Intellectual Property Organization, “What is intellectual property” (February 21, 2021) online: World Intellectual Property Organization < https://www.wipo.int/about-ip/en/> [WIPO: Defining IP].
[ii] WIPO: Defining IP.
[iii] Government of Canada, “Intellectual assets” (February 21, 2021) online: Canadian Intellectual Property Office < https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03585.html?Open&wt_src=cipo-ip-main>.
[iv] Government of Canada, “What is a patent” (February 21, 2021) online: Canadian Intellectual Property Office < https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03716.html?Open&wt_src=cipo-patent-main> [CIPO: What is a patent].
[v] Patent Act, RSC 1985, c P-4 [Patent Act].
[vi] Patent Act, at s 2.
[vii] Whirlpool Corp v Camco Inc, 2000 SCC 67, at paras 64-67.
[viii] Apotex Inc v Wellcome Foundation Ltd, 2002 4 SCR 153.
[ix] AtraZeneca Canada Inc v Apotex Inc, 2017 SCR 943 at paras 46; 53; 55-56.
[x] Patent Act, at s 28.3.
[xi] Progressive Games v Canada (Commissioner of Patents), 177 FTR 241, at para 16.
[xii] Canada, Government of Canada, Manual of Patent Office Practices (2020) online: Canadian Intellectual Property Office < https://s3.ca-central-1.amazonaws.com/manuels-manuals-opic-cipo/MOPOP_English.html#_Toc57035319>, at s 17.01.02 [MOPOP].
[xiii] MOPOP¸ at s 17.01.03.
[xiv] Harvard College v Canada (Commissioner of Patents), 2002 SCC 76 [Harvard College v Canada].
[xv] Harvard College v Canada.
[xvi] CIPO: What is a patent, at “What you can patent”.
[xvii] Monsanto Canada Inc v Schmeiser, 2004 SCC 34, at para 22.
[xviii] Patent Act, at s 27(8).
[xix] Pioneer Hi-Bred Ltd v Canada (Commissioner of Patents), 1989 1 SCR 1623.
[xx] MOPOP, at s 17.03.04.
[xxi] Schlumbereger Canada Ltd v Canada (Commissioner of Patents), 1982 1 FC 845 (CA) [Schlumbereger Canada Ltd v Canada].
[xxii] Re Motorola Inc’s Patent Application No 2,085,228, 1998 86 CPR (3d) 71 (Pat App Bd & Commissioner of Patents).
[xxiii] Schlumbereger Canada Ltd v Canada.
[xxiv] Lawson v Commissioner of Patents, 1970 62 CPR 101 (Ex Ct).
[xxv] Harvard College v Canada.
[xxvi] Tennessee Eastman v Canada (Commissioner of Patents), 1974 SCR 11.
[xxvii] Cobalt Pharmaceuticals Company v Bayer Inc, 2015 FCA 116.
[xxviii] Canada (AG) v Amazon.com Inc, 2011 FCA 328 [Canada (AG) v Amazon.com Inc].
[xxix] Canada (AG) v Amazon.com Inc.
[xxx] Alice v CLS Bank International, 573 US 208 (2014).
[xxxi] Bryce C Tingle, Start-up and Growth Companies in Canada: A Guide to Legal and Business Practice, 3rd ed (Canada: LexisNexis Canada, 2018) at 140.
Blog posts are by students at the Business Venture Clinic. Student bios appear under each post.