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CCCA_V6No1_Dept-IntelProperty-FIN_CCCA_V5No3_Dept-IntellectualProperty-V1.qxd 2/13/12 8:39 PM Page 13 Intellectual Property Did the FCA get it right? claim should be considered to relate to is directed to statutory subject matter. The SCC is clear that patent claims should statutory subject matter. Although some be purposively construed as a necessary questions may remain, a purposive con- Ron Faggetter is a partner in the Toronto office prerequisite to assessing both infringement struction approach provides a welcome of Smart & Biggar. His areas of practice include and validity. Further, the SCC stated in framework for analyzing whether a claim patents, industrial designs and trademarks. Whirlpool v Camco (Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067): “it has always been a fundamental rule of claims con- struction that the claims receive one and the same interpretation for all purposes”. Thus, very likely this framework for analy- sis is correct. If “purposive construction” is the proper approach in assessing subject matter, anoth- er SCC decision, Free World Trust v. Electro Sante (Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R.1024) provides guidance. Free World Trust considered purposive construction in the context of infringe- ment. The SCC stated: “The claims lan- ENHANCE YOUR EXPERTISE – AND YOUR VALUE – WITH guage will, on a purposive construction, OSGOODE’S PROFESSIONAL LLM IN BUSINESS LAW show that some elements of the claimed Put the focus on what interests you most, with our Professional LLM Osgoode’s in Business Law. Taught by leading academics and top practitioners, invention are essential while others are this executive-style program offers you the unparalleled flexibility to non-essential.” study with a network of your peers while working full time. Professional This would suggest that, after a purpo- sive construction, if the only essential ele- STUDY ONSITE AT OUR CONVENIENT DOWNTOWN TORONTO FACILITY, LLM in OR VIA VIDEOCONFERENCE FROM ANYWHERE AROUND THE WORLD – ments are mathematical algorithms, the COURSES INCLUDE: claim would not be directed to statutory > Advanced Corporate Law > Corporate Remedies Business subject matter. Conversely, if the essential > Advanced Taxation > Corporate Transactions of Corporations and > International Commercial Law elements include elements which fit with- Shareholders Arbitration in the statutory definition of an invention, > Boards of Directors > International Securities as for example, a machine such as a com- > Corporate Finance Regulation > Corporate Governance > International Taxation puter, then the claim would be directed to > Securities Regulation statutory subject matter. DIRECTORS Free World Trust considered that an ele- ment will be seen as an essential element Poonam Puri Vanessa Grant Professor, Osgoode Partner, McCarthy either based on what is obvious to a work- Hall Law School Tétrault LLP er skilled in the art to which the patent Professional legal education the way REFLECTING ON YOUR SPECIALTY relates or if “the intent of the inventor, it was meant to be. To learn more or REFLECTS WELL ON YOU. expressed or inferred from the claims, [is] to register for an Information Session, that a particular element is essential irre- visit www.osgoodepd.ca today. spective of its practical effect”. This sug- A WORLD LEADER IN LAW SCHOOL LIFELONG LEARNING gests that it might be possible to craft a patent application so that certain elements of a claim which fit within the statutory definition of an invention are seen as essential elements, with the result that the PRINTEMPS 2012 CCCA Canadian Corporate Counsel Association 13