In a recent decision, Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, the Federal Court again rejected the approach the Canadian Intellectual Property Office (CIPO) took in assessing patentable subject matter and endorsed a legal framework that is consistent with previous decisions by the Supreme Court of Canada and the Federal Court of Appeal.
Background
Benjamin Moore is a famous paint manufacturer in North America. Its Patent applications 2,695,130 and 2,695,146 are related to its color selection technology that is implemented with computer. These applications were refused by CIPO for being directed to unpatentable subject matter. Benjamin Moore appealed to the Federal Court of Canada.
CIPO’s reasons for the refusal were based on a practice notice by CIPO, which practice notice prescribed a problem-solution approach to assess patentable subject matter. This approach requires the identification of a problem, and the solution to the problem was then identified from the application. The elements essential to the solution were then identified. Whether the claimed subject-matter that includes only the essential elements was statutory was assessed.
With respect to computer-related applications, the computer elements claimed were often considered non-essential and ignored unless a technical problem in the functioning of the computer is addressed by the solution. As such, the computer elements claimed were often not considered in the assessment, and the essential elements are deemed to be directed to a mere algorithm, which is not patentable.
In the 2020 Federal Court decision, Choueifaty v. Canada (Attorney General), 2020 FC 837 (hereinafter “Choueifaty”), which we reported earlier, the court rejected the problem-solution approach, and held that such approach is contrary to the jurisprudence previously established by the Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 (hereinafter “Free World”) and Whirlpool Corp v Camco Inc, 2000 SCC 67 (hereinafter “Whirlpool”).
In response to Choueifaty, CIPO issued a new practice notice, which changed the determination of essential elements while introducing the concept of “actual invention”. To be patentable, this actual invention must be physical, ostensibly consistent with the decision of the Federal Court of Appeal in Re Amazon.com Inc., 2011 FCA 328 (hereinafter “Amazon”).
The Decision
The rejections to the Patent applications 2,695,130 and 2,695,146 were issued prior to Choueifaty. The appeal to the Federal Court requested that the applications be declared patentable, or remand the applications to CIPO for re-evaluation consistent with Free World and Whirlpool instead of the previous problem-solution approach.
The respondent, Attorney General of Canada, conceded that the problem-solution approach is not consistent with the jurisprudence.
The Intellectual Property Institute of Canada (IPIC) intervened and proposed the following framework for assessing whether a computer-related patent application is patentable:
- 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.
Without going into much detail, the Court deemed this framework to be consistent with the existing jurisprudence.
The court then decided to remand the applications to CIPO for further determination.
Conclusion
Following on the footstep of Choueifaty, the Court in Benjamin Moore further clarified the approach for assessing patentability for computer-related patent applications, and potentially other patent applications.
It is now up to the Attorney General to determine whether to appeal to the Federal Court of Appeal. In this respect, it is noted that no appeal was filed with respect to Choueifaty and Amazon. As such, it can be reasonably expected that no appeal will be filed and this decision will become part of the jurisprudence.
If no appeal is filed, CIPO may issue yet another practice notice regarding the approach to assess patentability like it did after Choueifaty and Amazon. However, in the past, the practice notices issued by CIPO were not entirely consistent with the Court’s decisions. Thus, CIPO may once again try to skirt Benjamin Moore somehow.
Nonetheless, in the future, the assessment may focus on whether the claims are directed to a practical application, which, according to Amazon, involves physical existence or physical effects.
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