Criminal Procedure
in Canada
Steven Penney, B. A., LL.B., LL.M.,
Vincenzo Rondinelli, LL.B., LL.M. & James
Stribopoulos, B. A., LL.B., LL.M., JSD
$195 + tax
Approx. 540 Pages | Hardcover
November 2011 | ISBN: 9780433455219
“These three learned academics sought to marry the theoretical and the
practical, and the marriage is a happy one. This is an invaluable blend of Code
sections, Charter caselaw and constructive academic extrapolation for both
the highly experienced and the lowly neophyte.”
Alan D. Gold
The authors have chosen a chronological structure: the relevant rules
and procedures are introduced and explained in the same sequence
that a person investigating and prosecuting would ordinarily experience
them. This makes the book easy to refer to, and results in a more logical
and intuitive organization of the subject matter.
Book Features
• Provides a concise overview of the Canadian criminal process
• Addresses the division of jurisdictional powers between the provincial
and federal government concerning the criminal justice system
• Explains the sources of criminal procedure rules, including the
ongoing debate regarding judicially created ancillary powers
• Chapters are ordered according to the stages of a case from criminal
investigation, pre-trial procedures, the trial, sentencing, and appeals
• Separate chapters discuss in detail the topics of detention and arrest,
search and seizure, questioning, Charter remedies, and sentencing
• The authors have extensive academic and practice experience,
including as law profeesors and appellate counsel, so that this book
offers both an academic and practitioner’s perspective on how the
Canadian Charter of Rights & Freedoms, statutes and case law, come
together in formulating criminal procedure as it exists today
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LexisNexis and the Knowledge Burst logo are registered trademarks of Reed Elsevier Properties Inc., used under
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Canada Inc. All rights reserved.
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Canadian Patent Office
releases new guidelines
MEE LING
WONG
Although the Federal Court of
Appeal’s ruling in Amazon.com
Inc. v. Commissioner of Patents on
statutory patentable subject matter has yet to be released, last
month the Canadian Patent Office
forged ahead with its own patent
examination guidelines for evaluating statutory subject matter.
These guidelines, however, are
reminiscent of the analytical
methods applied by the commissioner in its 2009 refusal of Amazon’s patent application — which
was overturned by the Federal
Court, giving rise to the commissioner’s appeal earlier this year.
In 2009 the commissioner
rejected Amazon’s claims for its
“one-click” online ordering system
and method as lacking patentable
subject matter based on a fourfold analytical approach articulated for the first time in the commissioner’s reasons (C.D. No.
1290). Reviewing the patent application de novo, the Federal Court
([2010] F.C.J. No. 1209) found all
claims to be statutory and rejected
the commissioner’s analytical
approach as unsupported by either
Canadian jurisprudence or the
Patent Act.
As part of the analysis, the
commissioner had parsed Amazon’s claims to assess only the
novel or inventive elements for
patentability, dissected the claims
into both “form” and “substance,”
declared “business methods” as
categorically unpatentable and
imposed a requirement that the
claimed subject matter provide a
“technological” contribution. Justice Phelan of the Federal Court
criticized each of these steps, and
in particular, held that while a
patentable “art” was defined in
Canadian jurisprudence as a contribution to human knowledge,
there was no suggestion that this
contribution should be assessed
apart from the invention as a
whole. Further, the analysis of the
claims’ “form” and “substance” was
seen as a rejection of the purposive
claim construction prescribed by
the Supreme Court of Canada and
the introduction of a technological
test was found to be overly restrictive and confusing and beyond the
commissioner’s jurisdiction.
On appeal earlier this year, the
commissioner argued that Justice
Phelan erred in finding the claims
to be statutory on the basis that he
failed to consider the “actual
invention.” For the purpose of
YURI ARCURS / DREAMSTIME.COM
Amazon’s 2009 patent application concerned ‘one-click’ online ordering.
determining statutory subject
matter, the commissioner argued,
there must be a holistic consideration of the actual invention distinct from the claim construction
approach used for determining
infringement and validity. In
assessing statutory subject matter,
claim elements which do not contribute to the invention—those
that do not impart a special, new
and unexpected character — must
be disregarded.
The new examination guidelines follow these arguments. Examiners are now instructed to
examine two different aspects of
an invention: what the applicant
is claiming as its monopoly and
what the inventors actually
invented. If either the claimed
monopoly or actual invention is
found defective, then the application must be refused.
According to the guidelines,
the claimed monopoly is based on
the language of the claim itself
and is examined on the criteria of
definiteness, novelty, non-obviousness, utility and adequate
disclosure. The actual invention
requires identification of the
inventive concept of the claim,
which involves isolating those
claim elements required to provide the solution disclosed by the
inventors to the problem being
confronted. Those isolated elements are also subject to examination on the same criteria. To
qualify as statutory subject matter
however, a claim must have an
inventive concept that provides a
solution to a technical (relating to
engineering or the applied sciences) problem. If the inventive
concept solves a non-technical
problem, then it is non-statutory
and lacks practical utility.
While the commissioner has
made some concessions in
response to the Federal Court
decision—abandoning the bold
assertion that “business methods”
are per se unpatentable, for
example — the ne w examination
guidelines seem to be a restate-
ment of the rejected “form” and
“substance” approach, repackaged
in the guise of “claimed monop-
oly” and “actual invention.”
Instead of parsing the claims for
the novel and non-obvious ele-
ments, as was done in the 2009
commissioner’s decision, the
examination guidelines now man-
date a parsing of the claims for
those elements contributing to an
inventive advance. Further, despite
the Federal Court’s criticism of the
technological contribution test,
examiners are now expected to
identify elements that provide a
solution to a technical problem
and to determine whether a claim
is patentable by virtue of only
those elements. The new examina-
tion guidelines thus give exam-
iners wide berth to reject claims by
narrowly defining the technical
problem to be solved or by simply
concluding the invention solves no
technical problem at all.
Mee Ling Wong is an associate
at Dimock Stratton LLP in
Toronto and practises patent law.
