MOPOP - Chapter 12

Subject-Matter and Utility
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Subject-Matter and Utility

Table of Contents

12.01 Scope of this chapter

As was noted by the Supreme Court in Apotex v. Wellcome, the granting of patents is "a method by which inventive solutions to practical problems are coaxed into the public domain".1 To be patentable, an invention must "fulfil the statutory requirements of novelty, ingenuity and utility".2

The Patent Act, however, is not intended to cover all fields of human endeavour. Those fields to which it applies are called "statutory" and those to which it does not apply are called "non-statutory".

The definition of the term "invention" is set out in section 2 of the Patent Act and encompasses, explicitly or implicitly, all the foregoing requirements. The requirements of novelty and ingenuity are more specifically addressed by sections 28.2 and 28.3 of the Patent Act, and are discussed in chapter 15 of this manual - "Requirements for Patentability".

The present chapter sets out the Office's practice for determining whether or not an invention is statutory and useful. The former requirement can be framed in terms of asking whether or not the invention is proper "subject-matter" for a patent.

12.02 Statutory subject-matter

The definition of "invention" given in section 2 of the Patent Act indicates that an invention is:

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.

In order to be eligible for patent protection, the matter for which protection is sought must fall within one of the categories of subject-matter defined in section 2 of the Patent Act.

12.02.01 Art

The term "art", for the purposes of the Patent Act, pertains to the application of knowledge to effect a desired result.3 To be statutory, an "art" must belong to a field of technology and, consequently, be what the courts have termed a "useful art"4 and a "manual or productive art".5

An art must be the practical application of knowledge,6 and must therefore be defined in a manner that gives practical effect to the knowledge. An art, therefore, is claimed as either a method or a use.

A statutory "method" must be an act or series of acts performed by some physical agent upon some physical object and producing in that object some change of either character or condition.7, 8 Whether or not a method is statutory is not determined by whether or not it produces a statutory product.

A "use" is the application of certain means to achieve a specific result. A "use" differs from a "method" in that the contribution to the art must not be resident in the act or series of acts by which the result is achieved, but rather must arise solely from the recognition that the certain means can be applied (in an obvious way) to achieve the specific result see 12.06.08 for further guidance on "use" claims].

12.02.02 Process

A "process" implies the application of a method to a material or materials,9 and a statutory process must by necessity apply a statutory method. A process can be considered to be a mode or method of operation by which a result or effect is produced by physical or chemical action, by the operation or application of some element or power of nature or one substance to another. As with methods, whether or not a process is statutory is not determined by whether or not it produces a statutory product.

12.02.03 Machine

A "machine" is the mechanical embodiment of any function or mode of operation designed to accomplish a particular effect. A machine can be considered to be "any device that transmits a force or directs its application" or "a device that enables energy from one source to be modified and transmitted as energy in a different form or for a different purpose".10

12.02.04 Manufacture

The term "manufacture" was defined in Harvard College v. Canada (Commissioner of Patents) as being, broadly, "a non-living mechanistic product or process" and as being the process of making (by hand, by machine, industrially, by mass production...) technical articles or material (in modern use on a large scale) by the application of physical labour or mechanical power; or the article or material made by such a process.11

12.02.05 Composition of matter

The category "composition of matter" refers to combinations of ingredients, whether combined as a chemical union or a physical mixture, and includes chemical compounds, compositions and substances. The term "matter" implies that the ingredients must be perceptible in space and have mechanical mass. In Harvard College v. Canada (Commissioner of Patents), the Supreme Court noted that the scope of this category must be limited in some way, else the categories of "machine" and "manufacture" would be made redundant.12

12.03 Inventions must take a practical form

As noted in 12.01, an invention is a solution to a practical problem. In order to solve a practical problem, the solution must be in a form that can interact directly with the physical world and, hence, that will itself enable a person skilled in the art to obtain the intended result or benefit. Such a form is referred to herein as a "practical form" or a "practicable form".

The solution provided by an invention is that set of elements that are necessary to together provide the promised result. To be a "practical form", at least one of these "essential elements" must be physical. For the "practical form" to be statutory subject-matter, the set of "essential elements" must be, when considered in combination, a statutory art, process, machine, manufacture or composition of matter. To be patentable, this "practical form" must also be novel and unobvious; it must have been contributed by the inventors. [See also section 13.05.03 of this manual.]

12.03.01 Ideas are not inventions

The disembodied idea, concept or discovery that underlies or leads to an invention is not itself patentable, but must first be made into an invention by being reduced to a practical form. An idea or concept, no matter how well it may have been worked out and structured in the mind, is disembodied and is not capable of interacting with the physical world to solve a practical problem.

This distinction between a disembodied idea and an invention has been commented on by the courts. In Shell Oil Co. v. Commissioner of Patents, for example, the Supreme Court noted that "a disembodied idea is not per se patentable. But it will be patentable if it has a method of practical application".13 In Riello Canada Inc. v. Lambert, the court cited with approval comments from the UK case Reynolds v. Herbert Smith & Co., Ltd., which noted that "the idea that leads to an invention is [...] no part of the invention. The idea, or the recognition of the want, stimulates the inventor to do something else. It is the something further which he does which is the invention" and similarly that "discovery adds to the amount of human knowledge, but it does so only by lifting the veil and disclosing something which before had been unseen or dimly seen. Invention also adds to human knowledge, but not merely by disclosing something. Invention necessarily involves also the suggestion of an act to be done, and it must be an act which results in a new product, or a new result, or a new process, or a new combination for producing an old product or an old result".14

12.03.02 Claiming a practical form

In accordance with subsection 27(4) of the Patent Act, a claim must define "subject-matter of the invention". It follows from the foregoing that a claim must define a practical form. More particularly, this practical form must be either a physical object (a machine, article of manufacture or composition of matter) or an art or process in a field of technology that is practised as an act or series of acts performed by some physical agent upon some physical object to produce in that object some change of either character or condition (hereafter, such acts are referred to as physical steps).

Where a claim defines subject-matter that is disembodied, it necessarily follows that the matter of the claim is not statutory [see 12.03.01. Where a claim does define at least one physical object or physical step, it may nevertheless be that the claim does not define a statutory invention. This could be either because an embodiment encompassed by the claim is excluded or because the contribution made by the inventors does not include any physical object or step defined in the claim. Section 13.05.03 of this manual provides guidance on the manner of assessing the contribution, and sections 12.05 and 12.06 of this chapter provide specific guidance on how certain subject-matter is to be examined in the context of section 2 of the Patent Act and the contribution analysis.

12.04 Inventions must relate to fields of technology

The Courts have described the Patent Act as applying to the "useful arts" and the "manual and productive arts". The Office considers these terms to refer, in language more reflective of modern industry, to "fields of technology" see 12.02.01. An invention that does not relate to a "field of technology" is by consequence not statutory.

The term "technology" means "the application of scientific knowledge for practical purposes, especially in industry", "machinery and equipment developed from scientific knowledge", and "the branch of knowledge dealing with engineering or applied sciences".15

The "practical form" of a statutory invention see 12.03 must therefore be a technological solution to a practical problem see section 13.05.01a of this manual].

12.04.01 Relationship of claimed matter to a field of technology

As discussed in section 13.05.02 of this manual, examination of claims is performed from the perspective of both form and substance, and the requirement that an invention relate to a field of technology may, as appropriate, be evaluated in respect of both the form and substance of a claim.

In terms of form, a claim that, by its language, defines a "machine", "manufacture" or "composition of matter", is directed in form to statutory matter.

The category "manufacture" has been interpreted in such a fashion that it relates to both the manner of producing a product and to the product. A manner of producing "technical articles or material" [see 12.02.04 is statutory, and could be viewed as coming within the category "art", "process" or "manufacture". Regardless, such a manner of production falls within the definition of "field of technology".

An "art" or "process" that does not produce a technological article or material, however, may define by its form either statutory or non-statutory subject-matter. A claim that defines an art or process that has as its ultimate object the solution of a problem outside a field of technology is non-statutory by its form, whether or not it relies on patentable technology to achieve its purpose.

Thus, an artistic method for painting a portrait is non-statutory, and this does not depend on whether or not a patentable paintbrush or paint is used in the method see 12.06.03. Similarly, a method for swinging a golf club is non-statutory regardless of whether or not the club being swung is patentable in its own right see 12.06.05.

Where a claim defines subject-matter that is not objectionable by its form, it remains that the claim must define an "invention" in substance in order to be patentable. That is, a statutory "practical form" must have been contributed and the claimed subject-matter must be or include this novel and unobvious set of "essential elements" see 12.03.

Consider, for example, a claim to a toy soldier covered with a paint that changes colour in response to pressure, or to a novelty toy which rotates about an axle. Each toy falls into the category "manufacture", and in form is statutory. The toys, of course, are for entertainment, and serve no practical purpose related to industry. They are not themselves technological solutions to any problem in a field of technology. The patentability of the toys will therefore depend on their including a technological solution to such a problem. For example, developing the particular pressure-sensitive paint or figuring out how to enable the paint to be successfully applied to the toy could be a novel and inventive technological solution to a problem in a field of technology. Similarly, if the novelty toy was improved by the provision of an axle assembly having reduced friction, and thus allowing for better motion about the axle, the toy as a whole would include a technological solution (the axle assembly).

12.04.02 Guidance on non-technological fields

As noted above, an "art" or "process" that addresses a problem in a non-technological field is, itself, non-statutory.

Fields of human endeavour such as economics, commerce, accounting, record-keeping, marketing, and law are not themselves fields of technology. While it is certainly possible for inventions of relevance to such fields to be patentable (i.e. tools for use in their practice), advances in the concepts of their practice are beyond the scope of section 2 of the Patent Act. This exclusion applies to many types of commercial interactions, and in some contexts can be descriptively referred to as a "business method" exclusion as was done in Re Application No. 2,246,933 of Amazon.Com.16

Methods for influencing human interactions or behaviours do not belong to a field of technology. Such methods are implicitly dependent on the subjective interpretations, judgements and value systems of the parties involved, and these are not in any practical sense subject to the laws of science. It can therefore be broadly stated that methods of interpersonal communication and interactions governed by subjective valuations are not statutory. This includes methods for teaching, bartering, trading, selling, advocating, lobbying, etc.

Similarly, methods that are significant only by virtue of human, rather than natural, law do not belong to a field of technology. Thus, a method for filing taxes or for engaging in binding arbitration is not statutory.

12.05 Excluded subject-matter

It has long been appreciated that "[t]here is no inherent common law right to a patent. An inventor gets his patent according to the terms of the Patent Act, no more and no less".17

It is apparent from the form of the section 2 definition of "invention" that not everything can be patented. The Supreme Court noted in Harvard College v. Canada (Commissioner of Patents),18 in respect of this definition, that "[b]y choosing to define invention in this way, Parliament signalled a clear intention to include certain subject matter as patentable and to exclude other subject matter as being outside the confines of the Act". In her comments in Monsanto Canada Inc. v. Schmeiser, Arbour J. likewise noted that "[c]laims that would otherwise be valid may be limited by statutory provisions or by jurisprudence".19

The following sections set out various statutory and jurisprudential proscriptions to the scope of patentable subject-matter. The matter of any of the following sections is objectionable when claimed per se or when defined in a claim which includes no contributed statutory subject-matter see section 13.05.03b of this manual].

12.05.01 Scientific principles and abstract theorems

Subsection 27(8) of the Patent Act indicates that

No patent shall be granted for any mere scientific principle or abstract theorem.

This subsection has been interpreted as proscribing from patentability (inter alia) mathematical formula,20 natural phenomena and laws of nature.21

The proscriptions of this subsection apply when an attempt is made to monopolize the excluded subject-matter in a general sense, but not when (e.g.) a scientific principle, law of nature or mathematical formula is relied on in operating a practical form of an invention.

12.05.02 Methods of medical treatment or surgery

A method which provides a practical therapeutic benefit to a subject is considered to be a method of medical treatment and is therefore not patentable.22

By way of example, medical, surgical, dental, and physiotherapeutic methods of treatment are all excluded matter. To be considered a method of medical treatment, the method should cure, prevent or ameliorate an ailment or pathological condition, or treat a physical abnormality or deformity such as by physiotherapy or surgery.

Methods that involve performing surgery on the human or animal body are excluded, whether the effect of the surgery is therapeutic or not. Methods that involve the excision of tissue, organ, or tumour samples from the body are considered to be forms of surgery, and are excluded regardless of their reproducibility. The removal of fluids from the body such as by needle or cannula is not of itself surgery.

Methods for diagnosing disease are not methods of medical treatment, and are therefore not excluded as such.

A detailed consideration of "medical and surgical methods" can be found in section 17.02.03 of this manual.

12.05.03 Higher life forms

The Supreme Court determined in Harvard College v. Canada (Commissioner of Patents) that higher life forms are excluded from patentability by virtue of their not being either manufactures or compositions of matter within the meaning of the definition of "invention".23 Fertilized eggs and totipotent stem cells (which have the inherent ability to develop into animals) are included in the higher life form proscription.

The Office similarly takes the position that organs and tissues are generally not to be viewed as being manufactures or compositions of matter.

A complete consideration of "higher life forms" and "organs and tissues" can be found in section 17.02.01 of this manual.

12.05.04 Forms of energy

Forms of energy, such as electromagnetic and acoustic signals, regions of the electromagnetic spectrum, electric currents, and explosions are considered not to be manufactured from or composed of matter in the sense intended by the Patent Act. A form of energy is consequently considered not to fall within any of the categories of subject-matter defined in section 2, and more particularly not to be a "composition of matter" or a "manufacture" within the definitions provided in 12.02.24

12.06 Guidance on certain subject-matter

The following sections provide additional guidance on assessing whether or not the matter of a claim is, in form and substance, a statutory invention.

Section 13.05.03 of this manual sets forth guidance on identifying what within a claim has been contributed by the inventors. To be patentable, the contribution must include a statutory practical form [see 12.03.

It is important to distinguish between the practical problem that is being addressed and the end use to which the invention may be put. It is not necessary that the purpose for which the invention will be used be statutory, as long as the claims define a statutory practical form of the invention and not simply its non-statutory purpose.

An art or process otherwise meeting the requirements for patentability is not made non-statutory simply because it does not produce a statutory product or effect. A diagnostic medical method, for example, may be statutory despite that it merely produces information (which is, of itself, non-statutory). Similarly, a method for printing books may be statutory, while the printed matter in the product books may well not be.

A machine, article of manufacture, or compositions of matter, similarly, is not excluded from patentability solely on the grounds that it is to be used in a non-technological field. See 12.06.03

The following sections are intended, in respect of certain subject-matter, to clarify the foregoing statements.

12.06.01 Features of solely intellectual or aesthetic significance

The expression "feature having a purely intellectual or aesthetic significance" applies to certain features that cannot, in a practical sense, affect the functioning of an invention. Such a feature therefore cannot change the manner in which the practical form of an invention operates to solve the problem for which it is the solution, and consequently can never be an essential element of a statutory invention.

Where a claim includes a feature having a solely intellectual or aesthetic significance, and no statutory feature of the claim appears to form part of the contribution, the claim is objected to under section 2 of the Patent Act on the grounds that the feature having solely intellectual or aesthetic significance is not, of itself, a statutory invention see section 13.05.03b of this manual].25

Printed matter having purely intellectual significance, such as literary works, falls within this exclusion [See 12.06.04.

Where an invention requires a technical problem to be solved in order to enable a result or effect having a solely intellectual or aesthetic significance, the patentability of the invention is not diminished by the fact its purpose is to produce a non-statutory result or effect.26

12.06.02 Schemes, plans, rules, and mental processes

A scheme, plan or rule for performing an operation, achieving a result, controlling a method, or the like,27 or a process that is exclusively a series of mental steps,28 regardless of the reproducibility of these same (e.g. performing calculations; manipulating data or information to produce data or information having a different purely intellectual meaning or aesthetic significance), is disembodied (abstract) and is not a practical form of an invention.

All of the foregoing, consequently, are not by themselves "inventions" within the meaning of section 2 of the Patent Act. They are objectionable when claimed as such, or when present in a claim wherein the contribution does not include any statutory subject-matter.

In Re Application No. 2,246,933 of Amazon.Com, such a conclusion was reached and was expressed by reference to an exclusion from patentability of "business methods".29 The term "business method" refers in such a context to a scheme or plan for conducting commercial interactions.

Where, however, a scheme, plan, rule or mental process serves to limit the technological nature of a statutory element in a claim, it is the so-limited statutory element that is a discrete feature of the claim see section 13.05.03a of this manual].

A computer program (i.e. when not stored on a carrier), whether it takes the form of a proposed series of steps (e.g. a scheme or flow chart) or of specific code or pseudo-code, is effectively a scheme, plan or set of rules for operating a computer and is abstract in character [see section 16.08.04 of this manual].

The character or condition of a physical object (machine, manufacture or composition of matter) is not changed by an intent to use or operate said object according to a scheme, plan or rule.

12.06.03 Fine arts

A subset of those fields that are not "fields of technology" (not "manual and productive arts") are those referred to collectively as the "fine arts". In Re Application No. 003,389 of N.V. Organon, a "fine art" was described as being "that having intellectual meaning or esthetic appeal alone".30 The term is understood to include activities such as exercising, dancing, acting, writing, teaching, hair dressing, cosmetology, flower arranging, painting pictures and playing musical instruments. Generally, any product derived from a fine art will also be non-statutory.

Fine arts, and the products thereof, are not the "practical form" of any invention since they do not solve any problem in respect of practical affairs. Typically, the features that distinguish a product produced by a fine art will have purely intellectual or aesthetic significance [see 12.06.01. Printed matter having purely intellectual significance, such as literary works, is an example of this.31

The exclusion from patentability of fine arts does not extend to inventive materials and instruments made use of in practising a fine art. For example, while an artistic method of painting a picture and the resultant picture are non-statutory, an inventive easel for holding a canvas would be patentable. Similarly, the paints, paint-brushes etc. used in conjunction with the art (but not "derived from" the art as the picture is) are all statutory subject-matter.

12.06.04 Printed matter

A very recognizable application of the principle set out in 12.06.01 is in respect of printed matter. Where printed matter does not provide a new functionality to the substrate on which it is printed, there has not been a statutory contribution.32 For the printed matter and the substrate to be, together, a practical form of an invention, they must solve a practical problem related to the use of the printed matter in general, and not based on the solely intellectual or aesthetic content of the printed matter itself.

By way of example, each of the following has been affirmed by the Commissioner as being patentable: a textile material bearing markings to enable greater precision during a manufacturing procedure,33 a newspaper layout in which white space is left to facilitate reading when the paper is folded, a layout of text on a series of pages to facilitate a bookbinding process, and a layout of text on a ticket which permits the ticket to be divided either horizontally or vertically while ensuring all information will appear on both halves.34

In each of the foregoing, the printed matter gave to the combination a new mechanical functionality. The actual content of the printed matter was not the basis of the invention. Where printed matter has only an intellectual or aesthetic significance, it may conveniently be referred to as "non-functional descriptive matter".

The term "printed matter" should, in this sense, not be restricted to traditional "ink-on-paper" printing. Any display of information wherein the sole contribution is in the information itself is not a statutory invention.

Examples:

  1. An application describes a scratch-off lottery ticket wherein the scratchable areas are arranged in a maze-pattern and the user must scratch cells to determine if they can move their way to the end of the maze.

    • Claims:

      1. A scratch-off lottery ticket comprising a pattern of a plurality of intersecting pathways that define a maze, said pathways divided into individual cells, each cell including an indicator of direction and each cell being covered by an opaque scratchable material, wherein if the indicators of direction define a path from a first cell of the maze to a final cell of the maze, the lottery ticket is a "winning ticket".

    • Analysis: Scratchable lottery tickets are known in the art, and the ticket defined in the claim is distinguished from other tickets on the basis of the maze pattern and the indicators of direction. The ticket provides no new and inventive mechanical function in respect of scratchable lottery tickets. Although the backing and the scratchable coating are, themselves, statutory subject-matter, they have not been contributed by the inventors. The only potential contribution is the maze pattern and the indicators of direction, which are printed matter having solely intellectual meaning and are not a statutory invention. Where a claim includes discrete statutory and non-statutory features, and the contribution does not include any of the statutory features, the claim is objected to for not defining a statutory "invention" within the meaning of section 2 of the Patent Act see section 13.05.03b of this manual]. It is not necessary for the examiner to determine whether or not a discrete non-statutory feature is actually a contribution.
  2. An application discloses the nuclear coordinates of a crystal of a molecule X, and a general purpose computer having stored thereon known molecular modelling software. The applicants are the first to isolate a crystal of molecule X and determine its nuclear coordinates using X-ray diffraction.

    • Claim:

      1. A computer including a program means for displaying images of molecules, said computer containing stored data associated with the nuclear coordinates of molecule X and being capable of displaying an image of molecule X when said stored data is processed by said program means.

    • Analysis: The contribution lies in the nuclear coordinates of molecule X and the visual representation of the molecule. The computer is therefore distinguished from other computers only on the basis of data stored or displayed by it. The data does not solve a technological problem related to computers, and the computer and data are therefore discrete elements of the claim. The computer has not been contributed. The claim includes both a discrete statutory feature (the computer) and a discrete non-statutory feature (the data). Where it is determined that such a claim does not include any contributed statutory subject-matter, the claim is objected to for not defining a statutory "invention" within the meaning of section 2 of the Patent Act [see section 13.05.03b of this manual].

12.06.05 Games

A manner of playing a game or sport does not solve any practical problem in a field of technology, and a method for playing a game is consequently not statutory. This is so whether the claimed method is distinguished on the basis of specific rules governing play35 or in terms of actions to be taken to achieve specific game-related results.

As noted in 12.06.03, however, this is not to say that tools made use of in the playing of a game may not themselves be patentable (e.g. a specially designed table or playing piece, a game board with a particular mechanical function, or combination of such that is patentable on its own merits).36

Despite that a tool for playing a game may be patented, a method of using that tool to play a game would nevertheless be non-statutory.

12.06.06 Computer-related inventions

Computers are widely recognized as general-purpose machines for performing logic functions and calculations, and for storing, manipulating and displaying data.

The term "computer" as used in this section refers to an electronic device comprising a central processing unit (CPU or "processor"). The term is commonly understood to mean a "general purpose computer", such as a desktop or laptop computer which is capable of receiving input, such as via a keyboard, and providing output, such as to a display means. The term can also be applied to network servers, personal digital assistants (PDAs), multi-function cell phones, etc., and applies to the device itself, generally understood as being the assemblage of elements contained within a single case or housing. In certain contexts, the term must be understood to include certain ubiquitous peripherals such as a keyboard, mouse or display necessary for interacting with the computer itself.

Computer-related inventions are typically claimed in the form of a method, device or computer program. Computer programs are covered in section 12.06.02, and the entire subject of computer-related inventions is covered in all its aspects in chapter 16 of this manual.

A guiding principle in respect of computer-related inventions was provided by the Federal Court of Appeal in Schlumberger, which noted that "the fact that a computer is or should be used to implement a discovery does not change the nature of that discovery", and also that the presence of a computer cannot effect the "transforming into patentable subject-matter [of] what would, otherwise, be clearly not patentable".37

12.06.06a Computer-related method claims

Many methods involve the use of a computer or an apparatus or system including a computer. Whether or not a method relying on a device is statutory is independent of the presence of the device.

A method that, on its own merits, would be considered non-statutory does not become statutory simply by virtue of some part of the method being carried out on or by a computer. The method itself, as a whole, must be a solution to a practical problem and must lie within a field of technology. [ See 12.03 and 12.04 ]

12.06.06b Computer-related device claims

A device such as a computer itself or an apparatus or system including a computer associated with other devices is generally viewed as falling within the category of "machine".

Whether or not a claim to a device is patentable depends on the presence of a contribution in the claim and the nature of this contribution [see section 13.05.03 of this manual]. As noted in section 13.05.03b, for a claim to be patentable it must define at least one statutory element that forms part of the contribution. For a claim to a device to be patentable, the device itself must therefore be a contributed practical form. That is, the device must provide a novel and unobvious technological solution to a technological problem.

Determining whether or not this is the case can be performed by assessing the device itself, but in many cases can also be performed indirectly by reference to the method implemented by the device. Where a statutory method is implemented by a computer, apparatus or system, a device capable of implementing the entire method is necessarily a solution to a practical problem. Presuming the device has been specifically modified to implement the method, such that the device is novel and unobvious, it will be a statutory contribution. Whether modifying the device is done by hardware or software is not important.

Nothing determinative arises, in respect of the patentability of a device, from the mere fact that the device implements a non-statutory method or is intended for use in a non-statutory method. To be patentable, the device must provide a novel and inventive technological solution to a technological problem.

Where a device does provide a technological solution to a technological problem, the manner by which the device is adapted to provide that solution is also not determinative. That is, the device could be adapted by providing new hardware or by controlling existing hardware in a particular manner by the addition of software or firmware (software programmed into a read-only memory).

Note that the "technological solution to a technological problem" does not have to be in relation to the operation of the computer as a general purpose device (e.g. it is not necessary that a computer be made more efficient or reliable), but could be simply that the general purpose device has been adapted to act as a special purpose device. Thus, presuming novelty and ingenuity, any of the following provide technological solutions to technological problems and would be viewed as contributed devices: a computer programmed to allow its speakers to provide "surround sound", a computer adapted to operate using two central processing units, a computer programmed to allocate memory to video processing in a manner that increases the efficiency of the device when running several applications, and a computer whose motherboard has an inventive new video card slot with a faster data transfer rate.

Where a computer or other device does not provide a solution to a technological problem, the computer or device as a whole is not a contributed practical form of an invention. Where the device is further defined in terms of discrete non-statutory features, the claim would be objected to on the ground that it does not define a statutory "invention" within the meaning of section 2 of the Patent Act [see section 13.05.03b of this manual]. For example, a computer or other programmable device cannot be patentably distinguished from other computers on the basis of data stored on it. The reason for this parallels those given in 12.06.04; storing data on the computer does not make the computer a new and unobvious solution to a practical problem.

Example:

  1. An application discloses a method for optimizing the performance of a cell phone network, by dynamic allocation of traffic and control channels. Channel assignments are calculated according to novel algorithm X programmed onto a general purpose computer, which outputs the channels to be allocated to a device that allocates the channels to the base stations. Consider that, in view of the prior art, the method and the network performing the method are determined to be novel, inventive and useful.

    • Claims:
      1. A method for dynamically allocating control channels to base stations in a radiocommunication system comprising the steps of:
        1. associating a traffic channel with a control channel according to algorithm X;
        2. allocating the traffic channels to the base stations; and
        3. allocating the control channels to the base stations based on the allocation of traffic channels in b.
      2. A radiocommunication system that allocates control channels to base stations according to the method of claim 1.
      3. A radiocommunication system that operates on channels assigned according to the method of claim 1.
      4. A computer for determining the assignment of traffic and control channels for the method of claim 1, said computer programmed to associate a traffic channel with a control channel according to algorithm X.
    • Analysis:
      • Claim 1 defines a method that solves a technological problem relating to the operation of a cell phone network. The method includes the physical steps of assigning channels to the base stations, which alters their character or condition by imposing a technological limitation on their operating parameters (the channels they will use), and therefore is a statutory practical form. Novelty, ingenuity and utility being given, claim 1 is allowable.
      • Claim 2 is an apparatus or system (the cell phone network itself) in which traffic and control channels are assigned to its base stations according to algorithm X. The system implements the entire method of claim 1, and provides a novel and unobvious solution to a practical problem. The claim includes a statutory contribution (the novel system implementing the unobvious and useful method), and is patentable.
      • Claim 3 is a system that operates in an unspecified manner, but on the same channels as would be allocated using the method of claim 1. Since the system does not necessarily implement the inventive method of claim 1 in order to allocate channels, its patentability must be evaluated independently of the method. Although the system is statutory and presumably useful, it is not necessarily novel or unobvious. It would, for example, be anticipated by any radiocommunication system operating on a channel allocated by the method of claim 1.
      • Claim 4 defines a computer that implements only part of the method of claim 1. The computer, as a generic assemblage of hardware and software, differs from other computers only in having been programmed to perform the channel allocation required by the method of claim 1. Performing these calculations yields only information, and did not require any technological solution to a technological problem in the operation of the machine. The computer and the program to associate traffic and control channels are therefore discrete elements of the claim. The computer is a statutory feature, and the computer program (when considered in isolation) is a non-statutory feature. Where a claim includes discrete statutory and non-statutory features, and none of the statutory features has been contributed, the claim is objected to for not defining a statutory "invention" within the meaning of section 2 of the Patent Act [see section 13.05.03b of this manual].

12.06.07 Carrier substrates and storage media

As noted in 12.06.04, printed matter that does not provide new mechanical function to its display means does not transform the display means into an invention. Such printed matter itself is of purely intellectual or aesthetic significance and is not a statutory invention.

The principle can be reduced to the idea that using a known display means for its intended purpose of displaying information is not inventive, and cannot be viewed as being a contribution to the art of display means.

The principle applies equally to the storage of information using known storage means. A piece of music stored on a record, CD, DVD, or hard drive is not a solution to a technological problem, and using a storage means for its intended purpose is not a contribution. As the piece of music itself is a fine art [see 12.06.03, a claim to a piece of music stored on a known storage means does not contribute a statutory "invention" within the meaning of section 2 of the Patent Act.

As noted in 12.05.04, an acoustic, electric or electromagnetic signal is not statutory subject-matter. Claiming a signal in association with a carrier such as an electric wire or a fibre-optic cable does not introduce a statutory contribution where the carrier is simply being used for its known purpose of transmission.

As noted in 12.06.02, a computer program is not, of itself, statutory subject-matter. Where a computer program, in computer-executable form, is stored on a storage means (such as a hard drive, USB key, CD, DVD, etc.), the resulting product will be a statutory contribution if the program causes the device it controls to provide a technological solution to a technological problem.

12.06.08 New uses

A use, as noted in 12.02.01, falls within the category art. A use, like a method or a process, is a manner of achieving a result. In the case of a use, the result is achieved by the application of a particular means.

A use is distinguished from a method in that the latter involves directing the person skilled in the art to take a step or series of steps to arrive at the desired result. In contrast, a use must not require any specific step or steps to be followed. Rather, a use is defined only in terms of the means to be applied, the circumstances of this application, and the result to be achieved. The "how" of implementing a use must be left to the common general knowledge of the person skilled in the art. A claim that purports to be a use claim (e.g. a claim that begins "the use of") but that defines specific steps to be followed is, in effect, a method and must be examined as such.

From the foregoing, it can be appreciated that where, having been told the circumstances in which the use is to be practised, what means are to be used, and what result is to be achieved, the implementation is not known or obvious to the person skilled in the art, the use is not enabled. In such cases, the invention must be claimed in terms of the necessary steps to be taken to achieve the result and should (not "must" see below) be claimed as a method. The steps are essential elements of the invention.

In many fields, however, the distinction between a use and a method is of no practical importance; where a specific method would be statutory, the corresponding use would also be statutory. Where an examiner is satisfied that the claim defines all the essential elements of the invention, if a claim beginning "the use of" also includes steps, and is in reality a method, there is nevertheless little likelihood of confusion as to the scope of the claim and the true nature of the invention being defined.

In fields where the distinction between a use and a method is important, this distinction must extend to both the form and substance of the claimed invention see sections 13.05.02 and 13.05.03 of this manual]. On the form side, the requirement is simply that the use cannot be claimed in terms of any required steps. On the substance side, the analysis is best performed by identifying which features of the claim being examined distinguish the invention from the prior art. If these features all relate to the "how" of the use, the substance of the claim is a method and the contribution is not a use.38

Where the distinction between methods and uses is important is in fields where a method would be non-statutory but a related use would be statutory. This situation relates particularly to the pharmaceutical fields, where a method of treating a patient by some means is non-statutory but the use of a means in the treatment of a patient is statutory. Thus, a claim to "a method of treating a patient having disease Y, comprising administering to said patient drug X" is an excluded method of medical treatment, whereas the claim "the use of drug X to treat disease Y" would be considered statutory.

12.06.08a Uses of novel and inventive means

Where the means defined in a use claim is itself new and unobvious, it follows that any specific use of that means is contributed.

The claim must, of course, include all the elements necessary to achieve the promised utility (i.e. the essential elements of the invention) and must not, by its form, define excluded matter. That is, the use must be in a field of technology and the claim must not include active steps that render it a non-statutory method.

12.06.08b Uses to achieve non-analogous results

Where the means to be applied is known (i.e. lacks novelty), but is being used to achieve a result that is not analogous to a result it was known to be useful for (i.e. where it would not have been obvious at the claim date that the means would provide the promised result), a new use of that means has been contributed.

A "non-analogous" result arises in circumstances where the means would not usually have been applied, such as where the means is applied in a different field, or to achieve an otherwise entirely unrelated result. The use of a toxic chemical, previously used as a rat poison, as a growth promoter in plants would be a non-analogous use.

As always, it is necessary that the claim define all the essential elements of the invention and, by its form, not define excluded matter. If, for example, the toxic chemical in the previous paragraph would only work as a growth promoter in certain concentrations, this would need to be defined in the use claim. If a use claim defined that the plant whose growth was promoted had medicinal properties, and further included a step wherein the plant was administered to a sick animal, the claim would, by its form, be an excluded method of medical treatment.

12.06.08c Uses to achieve analogous results

Where a means is known to be useful to achieve a generic result in a given field, it may be discovered that it can be used to obtain a more specific result in that field. The term "analogous result" is used to mean such a selected or otherwise limited specific result.

Where a generic means was known to achieve a generic result, the selection of a specific means from the generic means might provide a substantial advantage. Where the means has already been made, it cannot itself be claimed. But as long as it was not previously used to achieve the specific result, its selection to achieve that result contributes a new use. Thus, if it was previously known to use non-steroidal anti-inflammatory drugs (NSAIDs; a generic means) to treat headache (a generic result), but subsequently discovered that one NSAID in particular (a specific means selected from the generic means) did not produce any gastrointestinal side-effects (a specific result), the use of that NSAID in particular to treat headache without side-effects would be an analogous result.

Where a specific means was known to achieve a generic result, but was later discovered to also achieve a specific result under selected circumstances, the resultant use claim must be carefully considered to ensure the selection of the specific circumstances is not a "how" limitation applied to the previously known use. If the only difference between the new use and the old analogous use lies in the specifics of "how" the old use is practised, the claim, in substance, is a method.

Consider that NSAID X (a specific means) was known to treat headache (a generic result), but it was later discovered and disclosed that by dosing the NSAID according to a specific schedule an improvement in the treatment of headaches (reduced gastrointestinal side effects) is achieved. The difference between the old use of NSAID X and the new one is "how" the drug is administered. A claim to "the use of NSAID X to treat headache with reduced gastrointestinal side effects" is, in substance, a new method of medical treatment. This is so whether or not specific method steps are defined, and regardless of whether they are defined in the active or passive voice. Thus, the following claims would all, in substance, be objectionable in the given circumstances:

  1. The use of NSAID X to treat headache with reduced gastrointestinal side effects.
  2. The use of NSAID X to treat headache with reduced gastrointestinal side effects, wherein the NSAID is administered three times daily.
  3. The use of NSAID X to treat headache, wherein reduced gastrointestinal side effects are obtained when administration of the NSAID occurs three times daily.

Claim 1 adds to the known use an additional desired result that can only be achieved through the particular manner of administration. When understood in view of the description, the claimed invention would be understood to distinguish over the prior art only in respect of "how" the desired result is achieved. Claim 3, similarly, distinguishes over the prior art in terms of "how" the administration is performed. Although both claims 1 and 3 are in an acceptable form, they are both in substance methods of medical treatment. Claim 2 defines the same subject-matter as claim 3, but uses active language to define the administration. The presence of the active step of administration means that the claim is not, by its form, properly a use. It would be examined as a method, and rejected as a method of medical treatment.

12.06.08d Medical uses

As noted above, where a use relates to medicine the distinction between a use and a method is critical to the patentability of the claimed invention. Depending upon how a use claim is worded, it risks being, in form or substance, a method [see 12.06.08.

Generally speaking, any level of detail can be used in defining the nature of the means to be applied, as long as the details pertain specifically to the physical nature of the means itself. Thus, where the use involves a medicament, the medicament could be defined in terms of its physical state, form, composition, properties, concentration, or other physical characteristics relevant to the proper operation of the invention. Such features define the physical nature of the medicament as a composition of matter.

Similarly, the result to be achieved can be defined to whatever level of precision is necessary in the circumstances of the invention. In a medical use, the result is typically defined as "in the treatment of disease X" or similarly. Again, how narrowly X must be defined ("in the treatment of disease", "for treating autoimmune disorders", "in treating arthritis", "in the treatment of systemic lupus") will depend on the circumstances of the invention.

Where, in order to clear the prior art, it is necessary to limit a generic result to a specific result, it must be remembered that the person skilled in the art must be able to reproducibly achieve this result by applying ("using") the means according to their common general knowledge. If the specific result would not be reproducibly achieved when the means was used according to this knowledge, further "how" limitations are necessary to guide the person skilled in the art to inevitably succeed. The inclusion of these essential elements into the claim, however, will likely cause the claim to be, in substance, a method.

12.06.08e Uses of methods

Canadian jurisprudence appears to acknowledge that the means in a use claim can itself be a method.39 The use of a method to achieve a different result is, in effect, a method. Using the use format is simply a shorthand for incorporating the physical steps of the method (the means), with the promised result of the use becoming the promised result of the method.

Thus, if "a method for filtering particulates from acidified wastewater, comprising the steps of [A, B, C]" is known as the "ABC filtration method", a claim to "the use of the ABC filtration method for filtering E. coli from drinking water" is a claim to "a method for filtering E. coli from drinking water, comprising the steps of [A, B, C]".

Note that the use of a method of medical treatment will, by consequence, always be considered non-statutory.

It is also worth noting that a claim to a use setting out the same result as the corresponding method is a redundant claim. Using the foregoing example, a claim to "the use of the ABC filtration method for filtering particulates from acidified wastewater" is conterminous with the method itself.

12.07 Office actions on subject-matter

A claim may be rejected as not defining a statutory invention for several reasons see section 13.05.03b of this manual]. These are, principally:

  1. if the claim does not define any statutory features;
  2. if the claim, on its face, is directed to excluded subject-matter; and
  3. if the claim includes both statutory and non-statutory discrete features, and it is determined that none of the statutory features was contributed.

Situations 1) and 2) correspond to the two alternatives included in case ii) in 13.05.03b, and point 3) corresponds to case iii).

Under situation 1), if the claim does not include a physical object or an art or process comprising at least one physical step [see 12.03, then the claim is rejected on the grounds that it does not include any statutory features.

Under situation 2), if any one embodiment encompassed by a claim is excluded subject-matter as described in 12.05 or 12.06, the claim is rejected for including non-statutory matter.

Under situation 3), the claim has been analysed as set out in 13.05.03a and found to include both statutory and non-statutory discrete features. If it is concluded that no statutory contribution exists, the claim is rejected for not defining a statutory "invention" within the meaning of section 2 of the Patent Act.

Under situation 3), the report should include the contribution analysis in a clearly identified section see section 13.06 of this manual]. It is important that this analysis be clear and that it be presented separately from any objections resulting from the analysis itself. The contribution analysis is necessarily concerned with identifying what within a claim is new and inventive and, particularly where this determination is made in view of prior art, the analysis can resemble that used in evaluating novelty and/or inventive step. It is important that the objection to the absence of a statutory "invention" not resemble an objection to lack of novelty or to obviousness.

Where the practical form defined in the claim lacks novelty or inventive step, the appropriate objections are raised independently of and in addition to any objection to the claim under section 2.

12.08 Utility

Presuming that the claims define statutory subject-matter, section 2 of the Patent Act also requires that the matter of an invention be useful. Utility in the sense of the Patent Act can be considered as a requirement for an invention to be operable, controllable and reproducible.

The utility of an invention must be specific (a particular utility must be disclosed, rather than a generic indication that the invention may be "useful" in a given field),40 practical (in the sense of addressing a need in a manual or productive art),41 and credible (in the sense of being supported by the description in a manner sufficient for the person skilled in the art to expect it to be realizable and to be able to operate it to the same advantage as the inventors - see 12.08.06).

Utility is an essential aspect of an invention, but the utility of a physical object does not need to be explicitly defined in the claims.42 (Since an art or process is always directed to a specific purpose, their utility will always be defined in each claim.) To be directed to a useful embodiment, a claim must define the inventive element or combination of elements necessary to enable the proper operation of the invention for its intended purposes.43 A feature that is required to allow the invention to work, but which is not part of the invention per se (i.e. whose presence is understood by the person skilled in the art as being implicit) need not be defined.44

12.08.01 Operability

In simplest terms, the requirement that an invention be operable is simply an indication that it needs to work for its intended purpose.

The Supreme Court affirmed in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. that, for the purposes of Canadian law, a lack of utility exists if "the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do"45 and that "[i]f and when used in accordance with the directions contained in the specification, the promised results are obtained, the invention is useful in the sense in which that term is used in the patent law".46 This was merely the reiteration of a long-accepted47 and extant48 standard.

Where the utility of an invention is self-evident to the person skilled in the art, and no particular promise has been made in regard to any advantages of the invention (e.g. if the invention was to simplify a known invention), the self-evident utility is sufficient to meet the required standard.

Where, however, the inventors promise that their invention will provide particular advantages (e.g. will do something better or more efficiently or will be useful for a previously unrecognized purpose) it is this utility that the invention must in fact have.

Although an invention need only have one use in order to be patentable, where several uses are promised the applicant must be in a position to establish each of them. For example, if a composition is promised to be useful as a drug, the applicant must be in a position to show that it is useful in the therapy of at least one disease. If, however, it is promised to be useful as a drug for treating many diseases, the applicant must be in a position to establish its utility [see 12.08.03 & 12.08.05 in treating each of the diseases.

12.08.02 Controllability and reproducibility

Further, to be considered to have utility an invention must be controllable and reproducible.49 This means that the desired result must inevitably follow when the invention is put into practice. It is to be noted that the idea that the "desired result must inevitably follow" can refer to an accepted degree of success of a particular repetitive mass production method. For example, if a method is known and universally recognized in a particular art of having a success rate under a certain ratio or percentage of rejects, the desired result inevitably follows if this method is inside such parameters.

Inventions that are arrived at by chance, and which cannot be reliably reproduced, lack utility.50 An invention that relies on the judgement or reasoning of an operator is deemed to lack reproducibility and consequently to lack utility.51

Certain mental steps involving the ascertaining and sensing facilities have precise and predictable results, and do not of themselves cause the art or process that relies on them to lack utility. Whenever a person is called on to perform a subjective interpretation, however, the result will be subject to such factors as intuition, creativity, conjecture, and approximation and the result will not be objectively controllable or reproducible. This lack of control and reproducibility is amplified if the subjective judgement calls into play a person's system of values, beliefs, interests or preferences.

12.08.03 Establishing utility

The Supreme Court noted in Apotex Inc. v. Wellcome Foundation Ltd. (Apotex hereafter) that

Utility is an essential part of the definition of an invention (Patent Act, s. 2). A policy of patent first and litigate later unfairly puts the onus of proof on the attackers to prove invalidity, without the patent owner's ever being put in a position to establish validity. Unless the inventor is in a position to establish utility as of the time the patent is applied for, on the basis of either demonstration or sound prediction, the Commissioner "by law" is required to refuse the patent (Patent Act, s. 40).52

The utility to which the court is referring, of course, is that promised by the inventors (see 12.08.02).

Demonstrated utility pertains to embodiments of the invention that have been shown to actually work for the ends promised by the inventors. Utility can be demonstrated, for example, by the provision of working examples.

Soundly predicted utility pertains to embodiments of the invention which have not themselves been demonstrated to work for the ends promised by the inventors, but for which an appropriate basis exists upon which this utility can be predicted.

12.08.04 Sound prediction

In order for a prediction to be deemed to be "sound", it must meet the test set out in Apotex, namely that there must be:

  1. a factual basis for the prediction;
  2. an articulable and "sound" line of reasoning from which the desired result can be inferred from the factual basis; and
  3. proper disclosure.

It is important to keep in mind that a "sound prediction" does not imply certainty. It is clear from the very term "prediction" that this is so. At the same time, the Supreme Court was clear in Apotex that a patent monopoly is not to be granted in return for mere speculation. Consequently, in assessing whether or not utility has been established via sound prediction the emphasis is appropriately placed on "sound", and the question is whether a prediction is "sound" or "speculative". In Monsanto Co. v. Commissioner of Patents (Monsanto hereafter), Pigeon J. adopted the following terms to express this lack of certainty: "[i]f it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so. Of course, in so doing he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or [...] that some promise he has made in his specification is false in a material respect".53

It bears mentioning that the doctrine of sound prediction is of general applicability in every field for which patent protection may be sought.

12.08.04a Factual basis

Evaluating what will be a sufficient factual basis for a sound prediction must be conducted on a case-by-case basis, and will depend on such factors as:

  1. the scope of the claims;
  2. the state of the art;
  3. the nature of the invention and its predictability; and
  4. the extent to which the applicant has explored the area claimed, for example by conducting experiments which provide factual support for the utility asserted.

It is clear from Apotex that, while the factual basis may be provided by way of examples, there is no absolute requirement that this be so. Depending on the circumstances, it is possible that the factual basis need not even be provided in the application. For example, the factual basis could be found in scientifically accepted laws or principles, in data forming part of the state of the art and which is referred to in the description, or in information forming part of the common general knowledge of the person skilled in the art.

12.08.04b Sound line of reasoning

In order to take a prediction from the realm of speculation and render it "sound", the applicant must be able to provide to the person skilled in the art an explanation of how it is that, on the basis of whatever facts have been identified, of the state of the art, and of whatever the inventors have brought to light in their researches, the entire matter of the claimed invention can be expected to provide the promised utility. Since a sound line of reasoning is directed to a person skilled in the art, those elements of the sound line of reasoning that would be self-evident to the person skilled in the art in view of their common general knowledge do not need to be explicitly disclosed in the application.

Although no inventor is required to understand why their invention works, this does not dilute the requirements for a sound prediction. If an inventor cannot articulate a line of reasoning to soundly connect their factual support (e.g. their examples) to the remaining matter of their claims, they are not entitled to the full breadth of their claims.

It is not possible to provide exhaustive guidance on the types of reasoning which may be found to be "sound". In brief, however, the soundness of a line of reasoning can be effectively assessed by asking whether the person skilled in the art (represented during examination by the examiner) would accept the logic presented in the line of reasoning and derive from the sound prediction as a whole an expectation that the invention will provide the promised utility.

12.08.04c Proper disclosure

The requirement for proper disclosure means that the person skilled in the art has to, through the specification alone, be provided with sufficient information to understand the basis of the sound prediction and to practice the entire scope of the claimed invention. Elements of either the factual basis or the sound line of reasoning that form part of the common general knowledge will not, as a general rule, need to be disclosed. Elements that form part of the state of the art could (depending on the specific circumstances) be properly disclosed merely by referring to the document in which they are contained. Elements known only to the inventors, however, need to be included in the description itself.

12.08.05 Relevant date

The applicant must be in a position to establish the utility of their invention no later than at their filing date. Consequently, the factual basis upon which either the demonstration or sound prediction are based must necessarily exist as of the filing date. Similarly, if a sound prediction is to be relied upon, the articulable and sound line of reasoning referred to in 12.08.04 must also exist as of the filing date. As put by Binnie J. in Apotex, "[n]or, in my view, is it enough for a patent owner to be able to buttress speculation with post-patent proof, and thereby to turn dross into gold".54

Where an applicant is claiming priority, this claim is valid only insofar as the document or documents upon which it is based are sufficient to establish the utility of the invention. Although an applicant is entitled to add matter not included in the priority document(s) to the application as filed, where this matter is necessary to establish the utility of any embodiments of the invention those embodiments do not benefit from the priority date.

12.08.06 Sufficiency of the description

As is apparent from the foregoing discussion, the question of utility is strongly associated with the question of proper disclosure (i.e. sufficiency of description). As the Supreme Court noted in Apotex, "[d]isclosure is the quid pro quo for valuable proprietary rights to exclusivity which are entirely the statutory creature of the Patent Act".55

Subsection 27(3) of the Patent Act requires (inter alia) that the description "correctly and fully describe the invention and its operation or use as contemplated by the inventor". Thorson P. summarized the requirements for sufficient specification in Minerals Separation North American Corp. v. Noranda Mines, Ltd.,56 and later described this "onus of disclosure" as "a heavy and exacting one".57

The description must be correct; this means that it must be both clear and accurate. It must be free from avoidable obscurity or ambiguity and must be as simple and distinct as the difficulty of description permits. It must not contain erroneous or misleading statements calculated to deceive or mislead the persons to whom the specification is addressed and render it difficult for them without trial and experiment to comprehend in what manner the invention is to be performed. It must not, for example, direct the use of alternative methods of putting it into effect if only one is practicable, even if persons skilled in the art would be likely to choose the practicable method. The description of the invention must also be full; this means that its ambit must be defined, for nothing that has not been described may be validly claimed.58

As was noted in section 12.08.04c, the description must contain sufficient information to support a sound prediction of the utility of the invention. Further, it must set out the invention such that a person skilled in the art can practice it having reference only to the description itself and to common general knowledge.

In Consolboard, Dickson J. accepted that "the inventor must, in return for the grant of a patent, give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired".59 The description must be able to answer the questions "What is your invention?: How does it work?"60 such that "when the period of the monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application".61

A description sufficient to allow the public (in the form of a person skilled in the art) to practice the invention with the same success as the inventor is said to be enabling. Since the person skilled in the art is the addressee of the description, it is not necessary for common knowledge to be comprehensively disclosed nor to teach to the person skilled in the art things that would be plainly obvious to them.62

It is important to bear in mind that the specification must be sufficient to allow the full scope of the claimed invention to be practised without the need for the person skilled in the art to exercise their inventive ingenuity. If the person skilled in the art is called on to solve problems in such a manner that an inventive step would be present, the description is insufficient (and the attendant claims are unsupported).63 The obligation of the patentee for proper disclosure in this sense was described in Rice v. Christiani & Nielsen as:

[h]e must so draft his specification, that a person having a competent knowledge of the industry concerned [...] will be able readily to ascertain from it the relation the invention bears to the existing knowledge in the industry, and so that one should not be called upon to do experimental work in order to discover how the invention may be made operative. There must be an open exposition by the patentee of everything that is necessary for the easy and certain procurement of the commodity for which the patent was granted. The patentee is not to tell a man to make an experiment but to tell him how to do the thing.64

12.09 Office actions on utility

Where an examiner has reason to believe that an applicant is not in a position to establish the utility of their invention, where the manner whereby they have attempted to establish utility is defective or where there is evidence of inutility an objection will be raised. The nature of the objection will depend on the specific defect, and should serve to communicate the severity of the perceived deficiency.

If the perceived defect in a claim is one of scope (e.g. the invention has been claimed more broadly than the description appears to support, such that the entire claimed matter does not appear to have the promised utility), an objection can be presented under section 84 of the Patent Rules on the grounds of a lack of full support.

Such an objection could be made, for example, because an element of the invention (an "essential" element) has not been defined in the claim.

Similarly, when it does not appear that a sound prediction exists upon which the utility of the entire scope of the claim can be predicated, such that the scope of the claim consequently does not appear to be "fully supported" by the description, a rule 84 objection is appropriate.

Objections under section 84 of the Patent Rules suggest that the examiner views the defect in the claim as one of scope, and that it is remediable through amendment. If an applicant declines to amend, however, they are effectively asserting that the entire scope of the claim is their invention and objections to lack of utility (under section 2 of the Patent Act) and lack of sufficiency of disclosure (under subsection 27(3) of the Patent Act) could be raised in a subsequent report.

Section 2 of the Patent Act requires that an invention be useful. When an examiner has reason to believe that the invention as claimed lacks utility, and the matter is not of the nature described above in relation to section 84 of the Patent Rules, an objection is raised under section 2 of the Patent Act.

In Monsanto v. Commissioner of Patents, it was noted that inutility should only be alleged on the basis of evidence of inutility or of a reasoned argument as to why the applicant's sound prediction of utility is defective.65 An objection contending an applicant's sound prediction is flawed should be supported by setting out sufficient facts and reasoning to rebut the applicant's contention. The applicant must be given a sufficiently clear argument by the examiner that they are able to respond in an informed manner to those concerns raised by the examiner.

If the perceived defect is that the specification is, in view of the criteria set out in Apotex, insufficient to support a sound prediction, this should be clearly communicated. Where the defect is of the nature that no factual basis appears to exist or that no line of reasoning appears to exist (whether by explicit disclosure or in view of the common general knowledge of the person skilled in the art), the "reasoned argument" can be simply identifying these apparent omissions. In such cases, the objection to the claims under section 2 of the Patent Act should be accompanied by an objection to the description under subsection 27(3) of the Patent Act.

Conversely, even when an applicant has demonstrated and/or soundly predicted the utility of their invention, it may be the case that some basis exists (a factual basis such as data in the prior art, contravention of a law of science etc.) to contend inutility in regard to some embodiment of the invention. When such a basis can be identified, even as regards only one embodiment of a broad claim, the claim is objected to on the grounds of a lack of utility.

It should be noted that evidence of inutility can be provided at any time. There is no requirement that such evidence have existed as of the application's claim date.

On occasion, an examiner may be presented with an alleged invention that is contrary to known scientific principles. Unless the proper operation of such an invention can be established by demonstration, the claims defining it are rejected for lack of utility and the description for lack of proper disclosure.66 Depending on the nature of the invention, it may be helpful to request the provision of a working model of the invention in accordance with section 38 of the Patent Act.

Example:

  1. An application discloses a golf club having on the face of the club a pattern of features which are said to improve the trajectory of a ball struck by the club.
    • Claim:
      1. A golf club having a striking surface adapted with a design comprising [details of design].
    • Analysis: the question of whether or not the club is patentable is related to whether or not it provides the promised utility of improving the trajectory of a ball struck by the club. If no basis is provided in the application to conclude that the promised utility was established by demonstration, it must be presumed that the applicant intends to establish utility by sound prediction. In this case, a correct explanation by the inventor of why the design will controllably and reproducibly lead to an improved trajectory would be necessary to support the claim. If the applicant could not establish the utility of the design in improving the club, the claim would be rejected for being distinguished over the prior art only by an aesthetic feature. See 12.06.01