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Canadian Journal of Law and Technology

Authors

Ken Bousfield

Abstract

Patent-Eligible Subject-Matter in Canada The law of patent-eligible subject-matter in Canada has become badly muddled. There has been repeated confusion of subject-matter issues with non-subjectmatter issues such as novelty, obviousness, and utility. There has also been repeated confusion within the following group of issues pertaining to whether subject-matter is patent-eligible: whether a claim is for a mere idea or aggregation or for a patentable invention; whether claimed subject-matter falls within science and the useful arts; and whether claimed subject-matter falls within the statutory classes listed in the definition of “invention”. Echoes of older UK-based cases, relating to statutory provisions found in England, but not in Canada, continue to entangle subject-matter inquiries under the Canadian Patent Act. The structure of the Patent Act is based on logical, sound principles that have not changed in two centuries. The statute itself establishes an order of steps that, if followed, would resolve many controversial issues. That order starts with the requirement for subject-matter in ss 27(4) and 27(3), followed by consideration of the definition of “invention” in s 2. The Patent Act itself requires subject-matter first qualify as an art or science, where art means “useful art”, a point apparently not presented or discussed in recent case law. The significance of the recent Amazon.com case is not its effect on the particular applicant, but its treatment of, and apparent divergence from, sound principles of patent law. It had been hoped that Amazon.com might be an opportunity to set the law back on a straight course. In the end, the Federal Court of Appeal did not answer the question asked of it, and appears not to have reduced the confusion of previous case law. Closer adherence to the provisions of the Act, to the history and purpose of the Act, and to long-standing, sound, fundamental patent principles, might go a great distance toward untangling the law of patent-eligible subject-matter in Canada.

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