Subject Matter of Patents
1. Combinations & Aggregates
2. Computer Related s/Matter
Does Judicial Attitude Matter?
Despite the similarity in the wording
of most patent statutes, there is
dissonance on some subject matters.
Combinations and Aggregates
In addition to the already discussed
categories of non-patentable subject matter,
the following types of inventions are not
patentable in Canada:
 Aggregations and Combinations;
 Computer-related subject matter;
 Schemes, Plans and Business Systems.

Combinations and Aggregates
Patent law draws a distinction between a
combination and an aggregation. The
distinction is not merely one of academic
differentiation. It is a difference with legal
consequences.
 While combinations are patentable,
aggregates are not.

Differentiating Aggregates from
Combinations

In the British Celanese case, (1935) 52, R.P.C.
171, Lord Tomlin accepted as sound law the
doctrine that, “ a mere placing of old integers so
that each performs its own proper function
independently of any of the others is not a
patentable combination, but where the old integers
when placed together have some working
interrelation producing a new or improved result,
then there is a patentable subject-matter of the
working interrelation brought about by the
collocation of the integers.”
British Celanese v. Courtaulds

In the British Celanese case, the issue was
whether the “invention” was a new combination of
old elements, with the potentiality of obtaining the
optimum results OR whether there was no true
combination, but a mere collocation of elements,
performing their old functions. In other words, if
the latter, that the “combination” was one which,
given the problem, would naturally follow from
common knowledge in the art.
Combinations, Ingenuity &
Novelty

The concept of combinations and aggregates often
implicates the concepts of inventiveness
(ingenuity) and novelty. Where an invention is
said to be an aggregate, the courts often use the
language of “obviousness” to describe or
characterize the absence of “subject matter” in the
alleged invention. Similarly, the concept of
novelty may be used to describe the absence of
subject matter in aggregates.
Aggregates and Obviousness

The concept of obviousness is implicated in
those cases where the ability or capacity of
the integers to produce the result in issue
could have been obvious to the skilled, but
unimaginative work person.
Aggregates and Novelty

Similarly, the concept of novelty may be
implicated in cases where the integers have
already been disclosed by prior patents or
anticipated in other ways. In such cases,
courts often use the language of novelty to
characterize the absence of subject matter in
the alleged invention.
Aggregates and Combinations
Where 2 or more integers work on their
own without significant synergy or INTERRELATIONSHIP, such “inventions” are
characterized as aggregates, and as such,
unpatentable.
 Evidence of commercial success of such
aggregates would not suffice to make them
patentable inventions.

British Celanese v. Courtaulds

In the British Celanese case, the court found
that the alleged invention regarding a new
process for making artificial silk was a
collocation of four integers, all of which
were admittedly old. The question thus, was
what is “the inventive idea connected with
the collocation which constitutes subject
matter”. (Per Lord Tomlin at 193).
British Celanese v. Courtaulds

For the integers to be in combination, and hence
patentable, “they must be doing something which
they could not WITHOUT the presence of one or
more of the others.” Where each integer is in fact
performing its own part and is not functionally
dependent upon the presence of one or more of the
others, that “invention” lacks subject matter and is
thus non-patentable. See British Celanese at 194.
Williams v. Nye

The most obvious example of an aggregation is
the sausage machine case, William v. Nye, (1890) 7
RPC 62. Here, the ptf took out a patent for an
improved mincing machine and a filling machine,
both of which were old. He brought an action for
infringement against the dft. At trial, dft put in
issue the validity of the patent on the ground that
the alleged invention consisted simply in joining
two well known machines.
Williams v. Nye

The Court of Appeals in England held, affirming
the lower court, that the alleged invention, a
machine for mincing meat and filling the minced
meat into skins to make sausages, was an
aggregation of two distinct machines-the meat
mincer and the meat filler. Although the ultimate
result was “novel” and useful, because there was
no difficulty to overcome, the sausage machine
was not a patentable invention.
Aggregates and Combinations
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Do the elements combine for a unitary result?
(Domtar case)
Or, is the alleged invention a juxtaposition of wellknown integers?
Does the unitary result arise from the combination
of the old integers operating independently of one
another?
Even if the juxtaposition is novel and useful, was
it obvious to a person skilled in the art?
Summary

The law on patentability of combinations is
that a combination must compose of
elements cooperating and interacting to give
a novel, unified, and non-obvious result.
The unified result must be greater than the
sum of the parts or the elements put
together.
Computer-Related S/Matter

The patentability of computer-related subject
matter is a somewhat unsettled aspect of patent
law. Generally speaking, inventions relating to
computer hardware fit into the category of
“machines” which are clearly patentable subject
matter within the meaning of s. 2 of the Act. The
patentability of computer computer software
programs and processes employing computer
programs is much less clear.
Computer-Related S/matter

The courts in Canada have provided little
guidance as to what types of claims to
computer software and process steps define
potentially patentable subject matter. The
leading case on point is Schlumberger v.
Comm’r of Patents where the Court
attempted to draw a distinction between
patentable and non-patentable computerrelated subject matter.
Schlumberger Case
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Here, the applicant sought a patent for a ‘method’
for obtaining useful information about geological
formations. The method involved the steps of:
Providing data from recorded measurements taken
by instruments passed through boreholes;
Processing the data in a computer according to a
specified mathematical formula;
And printing out human-readable information
derived from the data in the form of graphs, charts
or tables.
Schlumberger

The application was rejected by the Patent Office
on the grounds that the alleged invention was not
an “invention” as contemplated by s.2 of the
Patent Act. In the opinion of the Patent
Commissioner, the application was in respect of a
computer programme. The applicant countered
that the application was in respect of a process
whereby a series of calculations were performed
mechanically so as to extract useful information
from some measurements.
Schlumberger

Notwithstanding this subtle argument advanced by
counsel for the applicant, the Court reasoned that
“what is new here is the discovery of the various
calculations to be made and of the mathematical
formulae to be used in making those calculations.
If those calculations were not to be effected by
computers but by men, the subject-matter of the
application would clearly be mathematical
formulae and a series of purely mental operations,
as such, …not patentable.”
Schlumberger

The reasoning of the court in the
Schlumberger case rested on the premise
that computer programs are essentially
mathematical processes or formulae which
could be applied MENTALLY. In other
words, the fact that such mathematical
processes are performed by computers, and
not by human beings, does not change the
essential character of the subject.
Schlumberger

That is to say, the calculations and formulae
were equated with “mere scientific
principles or abstract theorems” for which s.
27 (8) prescribed that no patent shall issue.
The patent claims of Schlumberger did not
recite any instrumentation for gathering
data, but included only steps for processing
data which had already been obtained.
Ratio of Schlumberger
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The court applied a 2 step approach for
determining whether computer-related subject
matter is patentable.
The first step is to ask, “What has been
discovered?”
The second is, “Is that discovery patentable
regardless of whether a computer is or should be
used to implement the discovery?”. This approach
is designed to ensure that unpatentable computer
programs are not made patentable.
Aftermath of Schlumberger

Given the ratio in the Schlumberger case,
especially, on the alleged distinction between
processes which are “mental” in nature (and thus
not patentable) and those which are not
(patentable), the Canadian Patent Board has given
liberal interpretation of the latter. In effect, the
Board has tended to rule that claims relating to a
system for providing a useful end result, which is
more than merely determining useful information
from calculations, are patentable.
Aftermath of Schlumberger
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None of the decisions on this subject rendered by
the Patent Board has been tested in the courts. Be
that as it may, the recent guidelines issued by
Patent Office on computer-related subject matter
provide that:
1. Unapplied mathematical formulae are
considered equivalent to mere scientific principles
or abstract theorems which are not patentable
under s. 27 (8) of the Patent Act;
Aftermath of Schlumberger
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2. The presence of a programmed general purpose
computer or a program for such computer does not
lend patentability to, nor subtract patentability
from, an apparatus or process.
3. If follows from 2, that new and useful processes
incorporating a computer program, and apparatus
incorporating a programmed computer, are
directed to patentable subject matter if the
computer related subject matter has been
integrated with another practical system that falls
within an area which is traditionally patentable.
Current Legal Position
Chapter 16 of the CIPO Manual provides as
follows:
 Patents are not to be granted to mere
algorithms or source codes. The key to
patentability is to integrate the computer
program in a useful device or process within
a subject category which is traditionally
patentable.

Chapter 16, CIPO Manual

For example, patents have issued in Canada
for systems involving the use of computers
to control a piece of machinery or a tangible
process; data manipulation and information
enhancement systems where the end
product is more than merely intellectual
information; and operating system software
involving more than a computer programme
per se.
Chapter 16, CIPO Manual

Patent applications in respect of claims to
programming languages, compilers,
databases, software engineering, etc, are
vulnerable to objections on patentability,
unless the software is associated with some
hardware element or process element
involving something more than a mere
algorithm. The drafting of the claims is very
critical to the issue of patentable s/matter.
Chapter 16, CIPO Manual

16.02: The specification must describe
the invention in normal language as in
other technical fields and not solely as
source code. Computer program
listings alone do not fully describe the
invention, but may be useful in
illustrating specific embodiments.
Chapter 16, CIPO Manual

There seems to be a three-stage test. On the
hardware aspect, the question is:
 “Are the important elements of the
computer system, e.g. processors,
memories, buses, interfaces, displays,
peripherals described to the point that a
person skilled in the art can make or
use the invention? Has the
interrelationship between the computer
elements and network been described
to provide the desired functionality of
the invention?
Chapter 16, CIPO Manual
 On
the software, questions that may
be asked include:
 Is the functional representation of the
computer program described?
 “Do segments of the program in
particular components function
separately from the remainder of the
computer program?”
Chapter 16, CIPO Manual
 On
the data, the questions include:
What is the source and the form of
input data? What is the form of the
output data? What is the format of
data when stored or transmitted?
What is the flow of the processing?
How do the software modules interact
with and transform the data?
Chapter 16, CIPO Manual
It is the interaction between the hardware,
data, and the computer programme that
determines whether or not the computerrelated invention is patentable or not.
 On this principle, computer software for
systems of conducting business, record
keeping, navigation and trading in securities
are not patentable in Canada.

Chapter 16, CIPO Manual

Accordingly, “In the absence of a full and
correct description of the invention by means
of hardware, software and data structure, the
application may be considered as describing
a mere scheme or as being directed to
calculations. A description is not sufficient if it
only teaches that useful information could be
extracted by making certain calculations
according to certain formulae.” CIPO Manual.
Summary
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The law on patentability of computer-related
subject matter may be summed thus:
Software expressed as lines of code or listings is
considered literary work protected under copyright
law, not patent law.
Software in the form of a data model or an
algorithm is excluded by virtue of s. 27 (8)
Software that is integrated with a traditional
subject matter (art, process--excluding
calculations, machine) is patentable.