"Canada’s Patent Act exists to encourage progress in science and the useful arts. It achieves this by securing inventors’ property rights in their inventions, thus establishing a market-based regime of incentives to foster innovation. Securing a patent is based on following logical, sound principles, unchanged in two centuries. The Patent Act itself establishes an order of steps that, if correctly followed, would resolve many controversial issues.
Under the act, a patentable invention must satisfy four main criteria: patent-eligible subject-matter; novelty; utility, and; non-obviousness. Novelty means new anywhere in the world. Utility is met where a person of ordinary skill, reading the specification, would understand the utility of the claimed invention. Non-obviousness requires that a persons of ordinary skill would not have been led to the claimed invention directly by the earlier teachings of others.
Recently, the scope of patent-eligible subject-matter has been controversial in pharmaceuticals, the life sciences; and in business methods, particularly involving computer software.
However, in the past few years, Canadian courts, including the Supreme Court of Canada (SCC), have issued rulings which may be seen as inconsistent or confusing in areas of patent-eligibility, novelty, utility, and non-obviousness . Canada does not have a specialized patent court, and the volume of litigation is insufficient to yield a finely developed body of law. Few judges have a technical or scientific background; fewer still have a background in patents.
This session will discuss how these issues have played out in several recent high profile cases and their implications for Canada’s science and innovation landscape.
In a modern agricultural context, the patenting of higher life forms is controversial, and has been the subject of two high-profile SCC decisions: Harvard College v. Canada (Commissioner of Patents) (the “Harvard Mouse” case), and Monsanto Canada Inc. v. Schmeiser (2004), which centered on patent infringement for genetically-engineered (GE) canola.
The 5-4 decision in the Schmeiser case led to concerns amongst anti-GE and some civil society and consumer groups about the ability to patent “the genes of life” and quasi-related unease about corporate concentration in the agriculture and food sectors. However, stakeholders in the agricultural biotechnology sector received the decision positively, as it affirmed the validity of their gene and cell patents and demonstrated that they could successfully seek redress for infringement.
In the Amazon.com case, the Federal Court of Appeal faced the issue of patent-eligibility of business methods, particularly those implemented by software applications. Although there had been hope that the Amazon.com case would bring clarity to the law, the outcome has been enigmatic. The patenting of business methods was also the subject of considerable debate in submissions before the House of Commons Standing Committee on Industry, Science and Technology for their March 2013 report on the Intellectual Property Regime in Canada.
Recently, the courts have had difficulty with utility. Odd decisions in the pharmaceutical field are now yielding equally surprising results in other business sectors. These cases and other practice changes have altered the balance between inventors and the public, and their effects now working their way through the economy."