Therefore, if a patent discloses an item that fulfills the requirements of novelty, non-obviousness and utility, it may nonetheless be found invalid on the grounds that it does not fall within one of the statutory categories of “invention”.
Shell Oil Co. v. Commissioner of Patents defined the term “art” broadly as the application of knowledge to effect a desired result.
[5] In Tennessee Eastman Co. v. Commissioner of Patents, the Supreme Court of Canada concluded that medical or therapeutic methods are not contemplated in the definition of invention as a kind of process.
[8] Harvard College v. Canada (Commissioner of Patents), as discussed below, has held that higher life forms, such as genetically altered mice, do not fall within the meaning of manufacture.
[9] “Composition of matter” is defined as a combination of ingredients or substances – a solid, gas, or fluid – as a chemical union or a physical mixture.
This is a policy issue that raises questions of great significance and importance and that would appear to require a dramatic expansion of the traditional patent regime.
Absent explicit legislative direction, the Court should not order the Commissioner to grant a patent on a higher life form.
The distinction drawn in Harvard between higher and lower life forms has been criticized as one that is difficult to draw and has no logical basis.
[26] The court ordered the application sent back to the Commissioner for expedited re‑examination with the direction that the claims constitute patentable subject matter.
CIPO published new guidelines for determining whether an invention constitutes statutory subject matter based on a purposive construction of the claims.