The Federal Court of Canada's recent judgment in Benjamin Moore & Co. v. Canada (AG), 2022 FC 923, ordered Canadian patent examiners to apply a new legal framework when they assess computer-implemented inventions for subject-matter patentability. The three-part test was proposed by the Intellectual Property Institute of Canada (IPIC), who intervened in the case. IPIC was represented by a team at Fasken composed of Julie Desrosiers, Eliane Ellbogen, and Michael Shortt. It is expected that this new test will clarify and simplify the assessment of the patentability of computer-implemented inventions and ensure that they are not unfairly denied patentability status going forward. Patent applicants and their Canadian agents should take note of the new framework.
Benjamin Moore appealed Canadian Intellectual Property Office's (CIPO) denial of two patent applications for a computer-assisted method of choosing paint colours to match moods and emotions. CIPO denied the patent applications on the grounds that they were not directed to patentable subject, but rather constituted a mere abstract theorem.
CIPO based its denial on (1) the so-called "problem-solution" approach to subject-matter patentability, which it uses for computer-implemented inventions, and (2) an overly broad application of the "mere scientific principle or abstract theorem" exception provided for at s. 27(8) of the Patent Act.
The problem-solution approach allowed CIPO to ignore computer hardware elements in claims, in contradiction to the requirement that essential claim elements be decided based on purposive construction. CIPO justified ignoring these elements on the basis that they were not necessary to achieve the particular solution that CIPO had deduced from the patent. This was problematic for patent applicants, since once the computer elements in a claim are removed as non-essential under the problem-solution approach, CIPO would then allege that the remaining elements defined an abstract idea or mere scientific principle, leading to the claim as a whole being rejected as non-patentable subject matter.
Arguments on Appeal
The appeal was somewhat unique in that all sides agreed that CIPO was in error and that the case should be remanded back to CIPO for reconsideration. Associate Chief Justice Gagné of the Federal Court agreed, reiterating that the "problem-solution" approach was expressly rejected in Choueifaty v. Canada (AG), 2020 FC 837, where Justice Zinn had previously held that this approach was inconsistent with purposive construction as set out in Free World Trust.
The real dispute on appeal was what guidance, if any, the Federal Court should offer to CIPO for that reconsideration.
The Attorney General of Canada argued against the Federal Court issuing guidance about the approach that CIPO should follow if the case were remanded back to it.
By contrast, IPIC urged the Court to offer explicit guidance on how CIPO should assess subject-matter patentability of computer-implemented inventions. CIPO submitted that such guidance was necessary in light of CIPO's systematic failure to follow binding case law, which led it to assess computer-implemented inventions through an incorrect legal framework. Indeed, following Choueifaty, CIPO issued a practice notice aimed at clarifying the applicable legal framework in the case of computer-implemented inventions. However, the practice notice continued to instruct patent examiners to use the very same problem-solution approach that had just been rejected by the Federal Court. The only change was that problem-solution thinking appeared under a slightly different name at a later stage of the test.
In place of the problematic problem-solution approach, IPIC proposed the following three-part test:
- Purposively construe the claim;
- Ask whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem; and
- If the construed claim comprises a practical application, assess the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.
Benjamin Moore endorsed this framework in oral argument at the hearing of the appeal.
The Federal Court adopted IPIC's test, and directed CIPO to apply it during the reconsideration of Benjamin Moore's patents. In adopting IPIC's test, the Court confirmed that the "physicality requirement" put forth by the Federal Court of Appeal in the 2011 Amazon case is subject to evolution as technology itself evolves. As IPIC argued, in the case of computer programs, it is an artificial distinction to assert that no "discernible effect or change" may result from a computer-based program, and it is therefore arbitrary to determine that computer-implemented inventions do not have the necessary "physicality" to be patentable. The Court agreed that CIPO's approach to computer-implement inventions misconstrues the Federal Court of Appeal's ruling in Amazon.
Implications for Patenting Computer-implemented Inventions in Canada
In sum, the Court confirmed that IPIC's proposed framework was consistent with the teachings of both the Supreme Court and the Federal Court of Appeal, as well as ensured consistency in the treatment of patents before CIPO and before the Courts and that computer-implemented inventions received the same treatment during patent examination as any other type of invention. Unless and until this decision is overturned on appeal, it constitutes the law of the land, binding on CIPO patent examiners and patent applicants alike. Indeed, given the Supreme Court's ruling in R v Sullivan, 2022 SCC 19, it is now binding on all Federal Court judges faced with the same issue.
This decision will provide much-needed clarity in how patent applications for computer-implemented inventions are examined by CIPO. This is especially significant because patent applications for computer-implemented inventions have increased exponentially in the past twenty years, especially those that incorporate artificial intelligence technologies.
The Attorney General has until July 18 to file a notice of appeal if the government intends to contest this decision, but an appeal is not guaranteed, since none was taken in Choueifaty. In light of the Court's decision, it is recommended that patent applicants review existing or future applications in light of the new framework. Applicants may also consider reinstating applications that were previously abandoned or appealing a refusal of an application where CIPO relied on an approach that would now be considered inconsistent with IPIC's proposed framework.
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