On June 17, Justice Gagné of the Federal Court of Canada (the "Court") reaffirmed the purposive construction approach over the problem-solution approach for assessing patentability in the decision of Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923.
The Intellectual Property Institute of Canada ("IPIC") intervened on behalf of the appellant, Benjamin Moore & Co. IPIC submitted that the Canadian Intellectual Property Office ("CIPO") continuously misapplied the law set out by the Court and therefore warranted the Court's intervention.
Specifically, IPIC proposed, and the Court adopted in its judgement, the following framework for assessing the patentability of computer-implemented inventions:
a) Purposively construe the claim;
b) 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
c) 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.
It remains to be seen how CIPO would react to this decision.
See the full text of the decision here.
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