CHAPTER 16

UTILITY AND NON-STATUTORY SUBJECT MATTER
16.01 SCOPE OF THIS CHAPTER
16.02 DEFINITION OF A STATUTORY INVENTION
16.02.01 An Invention Must Be Useful
16.03 PREREQUISITES OF A PATENTABLE INVENTION
16.04 EXAMPLES OF NON-STATUTORY SUBJECT MATTER
16.05 LIVING MATTER
16.06 JURISPRUDENCE

000032

U11UTY AND NON-STATUTORY SUBJECT MA1TER
CHAPTER 16
UTILITY AND NON-STATUTORY SUBJECT MATTER
16.01
SCOPE OF THIS CHAPTER
This chapter indicates practice on the kinds of subject matter considered to be an invention under Section 2 of the
Patent Act, divorced from considerations of novelty and unobviousness. Direction is given, in particular, as to the patentability of subject matter comprising: living matter, medical treatment, diagnostic methods, and intellectual matter, including computer related matter.
16.02
DEFINITION OF A STATUTORY INVENTION
Section 2 of the
Patent Act defines the essential features of an invention. It reads in part:
“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, manufacture or composition of matter.
Art means a mode, or method, or manner of accomplishing a certain result as distinct from the result. An art must accomplish some change in the character or condition of material objects. Any art which belongs to the professional fields and which is a manual art or skill is not an art within the meaning of Section 2 of the
Patent Act.
A process may be defined as a mode or method of operation by which a result or effect is produced by chemical action, by the operation or application of some element or power of nature or of one substance to another.
A machine is the embodiment in mechanism of any function or mode of operation designed to accomplish a particular effect.
Manufacture is defined as anything made by the art or industry of man and connotes the making of something which must be a vendible product of a process.
DRAFT
(2003,06,17) MOPOP Chapter 16- Page 1
000033

UTILITY AND NON-STATUTORY SUBJECT MATYER
Composition of matter means chemical compounds, compositions and substances.
16.02.01
An Invention Must Be Useful
Section 2 of the
Patent Act requires utility as an essential feature of invention. Utility, as related to inventions, means industrial value. If an invention lacks utility for its described purpose it will result in an invalid patent should it be granted. The use of the invention must be apparent from the description to one of skill in the art
16.03
PREREQUISITES OF A PATENTABLE INVENTION
In assessing whether subject mailer falls within the meaning of the definition of a patentable invention under Section 2 of the
Patent Act, the prerequisites established by Canadian jurisprudence and legislation that must be satisfied are, inter alia:
(a) whether the subject matter relates to a useful art (as distinct from a fine art where the result produced is solely the exercise of personal skills, mental reasoning or judgment, or has only intellectual meaning or aesthetic appeal);
(b) whether the subject mailer is operable, controllable and reproducible by the means described by the inventor so that the desired result inevitably follows whenever it is worked;
(C) whether the subject matter has practical application in industry, trade or commerce and
(d) whether it is more than a mere scientific principle or abstract theorem (Subsection 27(8) of the
Patent Act.
I 6.04
EXAMPLES OF NON-STATUTORY SUBJECT MATTER
(a) Plants and animals are not patentable subject matter. Seeds are also non- patentable, however a coated seed may be patentable if the invention resides in the coating given to the seed provided that the life process of the seed has not
DRAFT
(2003106117) MO POP Chapter 16- Page 2
000034

been altered and there is no new living matter.
Plant varieties that are distinct, uniform and stable may be protected under the Plant Breeders’ Rights Act, administered by Agriculture Canada.
(b) Subject matter related to a process of surgery or therapy on living humans or animals is not considered to be within the scope of “invention” as defined by section 2 of the
Patent Act. The exclusion does not cover methods of treating animals to derive economic benefit. Claims which could encompass both medical and non-medical methods are not patentable. Methods of testing which do not relate to any step of surgery or therapy or vital function of the body may be patentable. Articles or apparatus designed for use in the treatment of humans or animals are patentable, provided they conform to all other conditions of the Patent Act.
(c) Subject matter that accomplishes a result by means of a person’s interpretive or judgmental reasoning cannot form the basis of a patent.
(d) Subject matter that is a process or the product of a process, that depends entirely on artistic or personal skills, such as: procedures for exercising, teaching, cosmetological procedures, hair dressing, pedicure, flower arranging, painting pictures or playing musical instruments. However, materials and instruments used in these arts may be patentable.
(e) Subject matter that is only a scheme or plan, a mere scheme for doing business, a method of accounting or providing statistics, a personality or l.Q. test and the like is not considered to be within the scope of “invention” as defined by section 2 of the
Patent Act.
(f) Subject matter comprising new rules for playing games or the like, printed or design matter having intellectual connotations only is unpatentable. However, structural features of printed matter and arrangements specially adapted to produce a new mechanical function or purpose may be patentable.
DRAFT
(2003106117) MOPOP Chapter 16- Page 3
000035

U11LITY AND NON-STATUTORY SUBJECT MATTER
16.05
LIVING MATTER
Living matter is defined in terms of uni-cellular life forms, such as bacteria, many fungi (including yeasts), cells in culture, transformed cell lines and hybridomas, and multicellular life forms, such as plants, seeds and animals.
Uni-cellular life forms which are new, useful and inventive are patentable. A process to produce or a process which utilizes these organisms may also be patentable.
Multi-cellular life forms are not patentable subject matter. However, a process for producing a multicellular life form may be patentable provided the process requires significant technical intervention by man and is not essentially a natural biological process which occurs according to the laws of nature, for example, traditional plant cross-breeding.
DRAFT
(2003106/17) MOPOP Chapter 16- Page 4
000036

UTUJTY AND NON.STAflJTORY SUBJECT MATTER

16.06
JURISPRUDENCE AND REFERENCES
The following decisions of the courts are of importance in considering the subject matter of this chapter:
Use/Utility

Mailman v Gillet
Northern Electric v Photo
Wandscheer v Sicard Metallifiex v Wienenberger
Boehringer v Bell-Craig
Rhone-Poulenc v Gilbert
Burton Parsons v Hewlet
Marzone v Eli Lilly
Proctor & Gamble v Bristol
Monsanto v Corn of Patents
Consolboard v MacMillan
Radio Corp v Hazeltine
Shell Oil v Corn of Patents

8CR 724
ExCR 36
SCR 224
SCR I
35CPR49
SCR 117
39CPR201 1962
55 CPR 207 1968
17 CPR (2d) 97
1 SCR555
37 CPR (2d) 37
39 CPR (2d) 145
42 CPR (2d) 33
42 CPR (2d) 161
2SCR 1108 1979
56 CPR (2d) 145
56 CPR (3d) 170
2 SCR 536
67 CPR (2d) I
81 CPR (2d) 39
33 CPR(3d) 11
45 CPR (3d) 449
39 CPR (3d) 176
39 CPR (3d) 289
50 CPR (3d) 368
47 CPR (3d) 479
61 CPR(3d)499
53 CPR (3d) 417
60 CPR (3d) 512

1932
1940
1941
1948
1961
1961
1976
1976
1978
1978
1979
1979
1981
1981
1982
1982
1984
1990
1992
1991
1991
1993
1993
1995
1994
1995

Coming v Canada Wire & Cable Lubrizol v Imperial Oil
TRW Inc v Walbar
Welcome v Apotex
Haul-All v Shanahan
Unilever v Procter & Gamble
Feherguard v Rocky’s
DRAFT
(2003/06117)

MOPOP Chapter 16- Page 5

000037

UflUTY AND NON-STATUTORY SUBJECT MATTER

Novelty in utility
Wright v Brake Service
Pope Appliance v Spanish River’
Canadian Gypsum v Gypsum Lime
Mailman v Gillet
Lanlois v Roy
Northern Electric v Browns
Shell Oil v Corn of Patents
Apotex v Hoffman-La Roche
Re Application of Wayne State University
Nonstatutory subject rnatter
62CPR1OI 1970
62CPR 117 1970
SCR 111 1974
Re Application for Patent containing claims that read on mental steps
performed by a human operator in
deciding to transmit a signal
Re Application 3,389 of N.y. Organon
Re Application 880,719
Re Application of Polnauer
Re Dixon application 203
Re Application of Pallos
Re Application 079,973
Schlumberger v Corn of Patents
President and Fellows of Harvard College
v Corn of Patents 2002 SCC 76
DRAFT
(2003106/17) MOPOP Chapter 16- Page 6

ExCR 127
Ex CR28
ExCR 180
SCR 724
ExCR 197
SCR 224
2SCR536
67CPR(2d)1
15 CPR (3d) 217
24 CPR (3d) 289
22 CPR (3d) 407

1925
1926
1931
1932
1941
1941
1982
1982
1987
1989
1988

Lawson v. Corn of Patents
Tennessee Eastman v Corn of Patents

23 CPR (2d) 93
15 CPR (2d) 253
18 CPR(2d) 114
CPOR 40-xii Oct 5, 60 CPR (2d) 105
I CPR(3d)334
54 CPR (2d) 124
56 CPR (2d) 204
63CPR(2d)261
62 CPR (2d) 81
9CPR(3d)289
3 FC 40
14 CPR (3d) 491
25 CPR (3d) 257
22 CPR (3d) 159
33 CPR (3d) 160
3 CPR (4th) 517
9CPR(4th)479

Re Application of Abitibi Co.
lCl v Corn of Patents
Pioneer Hi-Bred v Corn of Patents
Re Application of Goldenberg
Re Application of Clorox Co.
Progressive Games v Corn of Patents

1972
1973
1973
1976
1978
1978
1979
1981
1982
1982
1986
1986
1987
1987
1988
1990
1999
2000

000038