In 2020,  the Federal Court ruled in Choueifaty that the "problem-solution approach" of the Canadian Intellectual Property Office (CIPO) to assessing whether computer-enabled subject matter was patentable was wrong in law1. Despite this, CIPO's guidance continued to reference this rejected approach (see our discussions  here and  here). This conflict came to a head in a recent appeal2 to the Federal Court in Benjamin Moore from two decisions of the Commissioner of Patents in which all parties (the patent applicant, the Attorney General and the Intellectual Property Institute of Canada (IPIC), an intervener) agreed that the Commissioner of Patents erred by continuing to apply the "problem-solution approach" in its assessment of patentable subject matter.

What you need to know

  • CIPO's continued use of the "problem-solution approach" to computer-enabled inventions, despite having already been held to be wrong in law, prompted the Federal Court to send the applications under appeal back for redetermination with clear directions on how to apply the law.
  • The Federal Court directed that the following three-step analysis be used:
    1. Purposively construe the patent claim.
    2. 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.
    3. 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.

Details of the case: Benjamin Moore

The Benjamin Moore case arose from two patent applications relating to the use of a computer to help consumers make paint colour selections. The applications were rejected by a patent examiner and a committee of the Patent Appeal Board (PAB), on the basis that they were directed to non-statutory subject matter. In making their determinations, both the examiner and the PAB relied on CIPO's Manual of Patent Office Practice (MOPOP), which directed reviewers to, in part, "identify the problem addressed by the application and its solution as contemplated by the inventor"3. This "problem-solution" approach articulated by MOPOP is the very one that the Federal Court had previously rejected in Choueifaty; however, even after that decision CIPO's updated guidance still included this rejected approach4.

The Commissioner's decision to reject the applications in Benjamin Moore turned on a problem-solution oriented approach:

[After the step of purposive construction] [t]the next step is to identify the problem addressed by the inventors and the solution put forth in the application. Essential elements can then be identified as those required to achieve the disclosed solution as claimed5.

The Commissioner further articulated the view, also entrenched in CIPO's guidelines, that "where a computer is found to be an essential element of a construed claim, the claimed subject matter will generally be statutory"6.

The Commissioner identified the "problem" in the applications as a need for a paint colour selection for consumers and the "solution" as the evaluation of compatible paint colour choices (based on mathematical modelling, user emotions or "colour harmony"). The Commissioner concluded that since there was "no computer problem to be solved, the computer and associated components were not part of the solution"—i.e., the computer component was not an essential element. Stripped of its computer elements, the claims failed for lacking statutory subject matter (as being nothing more than scientific principles or abstract theorems). The applicant, Benjamin Moore, appealed seeking to reverse the decision and have it sent back to CIPO for redetermination on the correct standard. IPIC intervened to argue that, despite the Federal Court's decision in Choueifaty, CIPO continues to use the rejected approach and suggested for the Court to provide clear guidance on the correct approach to CIPO.

In the appeal, all the parties, including the Attorney General, agreed that the Commissioner applied the incorrect test and standard, and that the applications should go back to the Commissioner for redetermination. The Court agreed that the Commissioner erred: "... instead of using the purposive construction approach to determine whether the actual invention is patentable, the Commissioner construes the claims ... by identifying only the novel aspects of the invention and determines that those novel aspects are unpatentable as 'mere scientific principles or abstract theorems,' [and the Commissioner thus] concludes that since there was no computer problem to be solved, the computer and associated components were not essential elements of the invention"7. The Court explained why this was problematic: "First, Free World Trust and Whirlpool require that claim construction be made prior to conducting the novelty analysis. Second, that is not the test dictated by the Supreme Court of Canada to determine whether an element is essential or not to an invention"8.

Since there was agreement that the Commissioner had erred, the focus of the appeal was on what, if any, directions should be given when the matter was remitted to CIPO for redetermination. The Court concluded that since (i) the approach that had been adopted in this case was wrong (and there may have been a hint of dissatisfaction with the continued adoption of the wrong approach in CIPO's examination guidance post Choueifaty) and (ii) the proper test to be applied is a question of law, it was appropriate for the Court to direct the Commissioner as to the proper legal framework to be applied. The Court further found that the approach offered by Benjamin Moore and IPIC was in keeping with the teachings of the Supreme Court (in Free World Trust9 and Shell Oil10) and the Federal Court of Appeal (in Amazon11). As such, the matter was sent back with explicit directions that the analysis be carried out in accordance with the three-step analysis set out above.

We will wait to see what CIPO decides on redetermination, and whether CIPO's guidance and practice notices will change in light of this case. Until that time, patent applicants of computer-enabled subject matter should be aware that CIPO's "problem-solution approach" has now been thoroughly rejected twice by the courts.


1 See Choueifaty v Attorney General of Canada, 2020 FC 837:

2 Benjamin Moore & Co. v Attorney General of Canada, 2022 FC 923:

3 See MOPOP sections 13.05.01 and 02.

4 The updated Practice Notice provides, at p. 2, that: "[a]n actual invention may consist of either a single element that provides a solution to a problem or a combination of elements that cooperate together to provide a solution to the problem."

5 Benjamin Moore, 2022 FC 923 at para. 15.

6 Ibid  at para. 17.

7 Ibid  at para. 36.

8 Ibid  at para. 36.

9 Free World Trust v Électro Sante Inc., 2000 SCC 66.

10 Shell Oil Co. v Commissioner of Patents, [1982] 2 SCR 536.

11 Canada (Attorney General) v, Inc., 2011 FCA 328.

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