The October 2010 Federal Court decision in v. The Commissioner of Patents1 ( may substantially broaden the range of subject matter for which patent protection is available in Canada. Quashing a decision by the Commissioner of Patents that had rejected a business method patent application (the Commissioner’s Decision) as being directed to non-patentable subject matter, Justice Phelan held that there is “no exclusion for ‘business methods’ which are otherwise patentable.” Thus, pending the current appeal by the Commissioner, business methods now fall outside the list of categories that are considered non-patentable subject matter in Canada.

The Supreme Court of Canada has held that higher life forms2 and methods of medical treatment3 are, for reasons of public policy, “non-statutory,” and therefore are also considered non-patentable. Within weeks of the decision, Justice Barnes of the Federal Court confi rmed, “The extension of patent protection over some business methodologies [per] . . . does not raise the kinds of public policy concerns that apply to the provision of medical care.”4 Nonetheless, may ultimately have an impact on patent law far beyond the fi eld of business method patents.

The Commissioner’s Decision had rejected certain of’s claims as non-patentable, not because they were directed to business methods per se, but because the novel and unobvious “contributed” subject matter of these claims was non-statutory. The Commissioner stated, “A claimed invention cannot be considered as statutory subject matter if the feature or group of features that make it new and unobvious comprise excluded subject matter” (at para. 129). The form and substance approach constituting the basis for the rejection of the claims in is set out in chapters 12 and 13 of the Canadian Manual Of Patent Offi ce Practice (the MOPOP). While the MOPOP does not have force of law, it is applied by the examiners during the prosecution of applications. For example, section 12.07 of the MOPOP states, “A claim may be rejected as not defi ning a statutory invention . . . if the claim includes both statutory and non-statutory discrete features, and it is determined that none of the statutory features was contributed.” Under this analysis, even if a claim was not, on its face, directed to non-statutory subject matter, if the novel or unobvious elements (also referred to as the “contributed subject matter”) of that claim were non-statutory, then the entire claim would be rejected as non-statutory.  

In, however, Justice Phelan fi rmly rejected the “contribution” analysis, stating “it is problematic to suggest that ‘what has been discovered’ stands apart from the claims as a whole. . . .” Later, Justice Phelan cited the U.S. Court of Appeal Bilski decision: “it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter. . . .”  

The appeal of the decision is being followed with interest by patent practitioners in the life sciences area because a number of objections raised by patent examiners stem from a type of contribution analysis. While method of medical treatment claims are not patentable subject matter in Canada, use claims are patentable. However, the Canadian Patent Offi ce does, in certain cases, object to use claims as being method of medical treatment claims where, for example, claims are drafted to a dosage regimen. This objection is on the ground that section 12.06.08 of the MOPOP provides that if the feature of a use claim relates to the “how,” the substance of the claim is a method and the contribution is not a use. Such an analysis is clearly a “contribution” analysis, as it involves parsing the claims into components in order to evaluate patentability, the very type of analysis held to be inappropriate by the Court in

Whether the decision is upheld on appeal and how it will ultimately affect Canadian patent practice remains to be seen. For the present, however, the Federal Court’s rejection of the contribution analysis has the potential to shift the boundary between patentable and nonpatentable subject matter in Canada.