In a recent decision, the Federal Court was asked to instruct the Canadian patent office on the proper framework for assessing whether inventions are patentable subject matter. The court held that the three part test proposed by the Intellectual Property Institute of Canada (IPIC) that includes asking whether the construed claim as a whole consists only of a mere scientific principle or abstract theory that should be rejected as unpatentable, or a patentable practical application that may employ a scientific principle of abstract theorem.
This decision, Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, arose from an appeal from the rejection of two patent applications CA2,695,130 and CA2,695,146 relating to a “computer-implemented colour selection method that uses experimentally derived relationships for colour harmony and colour emotion”. Both applications had been rejected by an examiner at the patent office as well as by the Patent Appeal Board (PAB). The PAB applied the patent office’s guidance at the time which involved “identifying the problem addressed by the application and its solution as contemplated by the inventor”. This problem-solution approach was rejected subsequently by the Federal Court in the Choueifaty decision (see 2020 FC 837) and the patent office issued updated guidance to examiners. The updated guidance said that for computer-implemented inventions, even if a computer is identified as an essential element of the claim, the claim may not be patentable if the computer does not solve any problem in the functioning of the computer.
On this appeal, all the parties agreed that the patent office had made a legal error in applying the ‘problem-solution’ approach to claim construction and that the patent applications should be remanded for further examination by the patent office. The question was whether to issue guidance on the proper approach (as advocated by the appellant and IPIC, which had intervened in the proceeding), or simply remand for further consideration, as argued by the respondent.
There has been significant debate about the preferred approach to determining if a patent application was directed to patentable subject in Canada since the one-click patent decision by the Federal Court of Appeal in 2011 (see 2011 FCA 328) which rejected several approaches to patentable subject matter but did not explicitly provide a test to applicants nor to the patent office. Practice Notices issued by the patent office in 2011 and 2013 provided guidance for patent examiners.
It was not until Choueifaty that an appeal to the Federal Court provided an opportunity for the court to consider the patent office’s guidance. In the Choueifaty decision, the court found, “that the Commissioner [of Patents] erred in determining the essential elements of the claimed invention by using the problem-solution approach, rather than the approach Whirlpool directs be used.” In Whirlpool (see 2000 SCC 67), the Supreme Court of Canada had directed a ‘purposive construction’ be used to understand the claims and identify essential and non-essential claims. In Choueifaty, after rejecting the ‘problem-solution’ approach that had been used by the patent office, the patent application at issue was remanded to the patent office for further examination. It was subsequently granted and the patent office issued updated patent guidance.
The legal framework proposed by IPIC and endorsed by the Court in Benjamin Moore was:
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.
The Court decided that the proposed legal framework was consistent with the legal authorities and so directed “CIPO on the proper procedure for claims construction and identifying patentable subject matter.” This framework closely tracks the language of the Patent Act’s prohibition in section 27(8) against patents directed to “mere scientific principle or abstract theorem.”
The framework is seen as likely being favourable to patent applicants who may have had patent applications rejected or face patentable subject matter objections for patent claims having computer implemented steps. While the Benjamin Moore decision may be appealed, patent applicants should watch for updated guidance from the patent office for its examiners on how to apply this framework to pending patent applications.