Patents

2. Are All Inventions Patentable?

(a) Proper Subject Matter

The subject matter of a patentable invention must be:

i. a process;
ii. a machine;
iii. a manufacture;
iv. a composition of matter; or,
v. an improvement of i - iv

Item i can include a process for making an otherwise unpatentable product. Item ii requires no explanation. A "manufacture" is differentiated from a "machine" by the fact that it, has no moving parts. An example would be a new type of hammer. A "composition of matter" is a product where the chemical nature of the substance is its distinguishing characteristic, e.g., a pharmaceutical or a fertilizer.

It follows from the above, from other prohibitions contained in the Canadian Patent Act, and from principles that have emerged from various court cases that:

• A patent cannot be obtained for a mere scientific principle or abstract theorem, but only for a practical embodiment which makes use of a specific principle. For example, the principle of the expansive action of steam on solid bodies could not have been patented when first discovered, but its practical application in the form of a steam engine was patentable by James Watt.

• A patent cannot be obtained for a business scheme, for example, a new type of franchised business.

• A patent cannot be obtained for professional skills, for example, a new method of treating a disease in humans or animals.

• A patent cannot be obtained for a process that consists merely of intellectual functions or mental steps. This is so because of the "scientific principle" basis set out above, or, alternatively, on the basis that a patentable process must be fully reproducible by any person skilled in the relevant field. In view of the differences in intellect between persons, a process consisting merely of intellectual functions or mental steps would not typically be consistently reproducible.

•Computer equipment, i.e., "hardware" is patentable. Traditionally, an invention which, although expressed in terms of the machine or process, is nothing more than what could be done mentally, could not be patented. Many computer programs were rejected in Canada for patentability on this basis. In any event, recent developments in the United States and Canada have seen patents granted for what essentially amounts to a computer program, at least where the patent agent is careful to couch the claim language to include some hardware element, even if only a computer disc, which contains the subject software. Protection may also be available under the copyright laws for computer programs per se, i.e., the actual computer code.

• A patent cannot be obtained for an invention that has an "illicit object" or that is prohibited by public law or morals. An example of this might be a burglary tool, unless the tool had an alternative legal use.

It is often easier to say what is not patentable than what is. If your invention is clearly unpatentable, we will be able to tell you this after reviewing your invention at an initial office consultation. If there is some doubt whether it constitutes patentable subject matter, we can only suggest that you file a patent application.