Well-Defined Implementations and Patentable Subject Matter

Date
2025-01-15
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Abstract

The Canadian jurisprudence relating to subject-matter patentability has developed errors that are inconsistent with over a century of comparatively stable interpretation of s. 27(8) of the Patent Act. The errors are the adoption of a physicality requirement and an approach to identifying the bar against mere scientific principles and abstract theorems that discounts the actual implementation of the invention and focuses instead on the form of the invention by looking for physical components or effects. This approach also is characterized by the failure to separately consider the issues of the bar against mere scientific principles, obviousness, indefiniteness, overbreadth/lack of support and meeting the definition of invention. The historical development of s. 27(8) and s. 2 of the Patent Act is analyzed and the origins of these errors are discussed, including a review of the most recent relevant jurisprudence. A more correct and concise approach to determining subject matter patentability would evaluate s. 27(8), after purposive construction, purely on the basis of whether the invention as claimed recites a well-defined application and specific implementation of the scientific principle or abstract theorem. A more correct determination of whether a claimed invention meets the definition set out in s. 2 would identify whether, after purposive construction, the invention has a utilitarian application for the benefit of humanity that does not fall within the liberal arts or another judicial exception. Separately from these determinations, and in no particular order, the other requirements for patentability may also be considered.

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Keywords
Patents, Patentable Subject Matter
Citation
Lambert, J. (2025). Well-defined implementations and patentable subject matter (Master's thesis, University of Calgary, Calgary, Canada). Retrieved from https://prism.ucalgary.ca.