A Missed Opportunity

In Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168 the Federal Court of Appeal had to assess the effort by the Federal Court to clarify the rule around subject matter objections for computer-implemented inventions. This remains a pressing issue as inventors of computerized inventions continue to seek patent protection in Canada. The Federal Court of Appeal declined to take the opportunity to clarify the rules that would be applicable because the parties and intervenors could not provide a consistent statement of the rules they thought should apply.

The background is that Benjamin Moore had been declined two patent applications for computer-assisted paint inventions.

The recent case of Choueifaty v. Canada (Attorney General), 2020 FC 837 was applicable. In Choueifaty, decided after the Commissioner had rejected the patentability of the patent applications, the Federal Court set aside a decision of the Commissioner on the basis that the approach used to construe the claims in the patent application in issue was not in line with the principles of purposive construction set out in Free World Trust v. Électro Santé Inc., 2000 SCC 66 and Whirlpool Corp. v. Camco Inc., 2000 SCC 67.

The Federal Court also noted that the Commissioner had erred by conducting a novelty analysis while determining the essential elements of the claims, contrary to Free World Trust and Whirlpool, which require claim construction to precede the novelty analysis.

Since the Choueifaty decision, the Patent Office issued an updated Practice Notice PN2020-04 which updated the Manual of Patent Office Practice (MOPOP).

Subsequently, Benjamin Moore appealed the decision of the Commissioner. In the appeal, the Attorney General conceded that the Commissioner of Patents had applied the wrong test to interpret the patent applications.

The Federal Court in the Benjamine Moore case took the advice of the intervenor, the Intellectual Property Institute of Canada (IPIC) to proactively instruct the Commissioner of Patents to assess the patentability of computer-implemented inventions using the following test:

1. Purposively construe the 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; and
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.

The AG appeals the decision of the Federal Court on the inclusion of the above test.

The Federal Court of Appeal found that the Federal Court erred in including the above test in the judgment. Further, the Federal Court of Appeal found it unwise to settle such policy issues prematurely without the benefit of a suitable case to examine all of the issues.

By the time of the appeal, the parties were not ad idem in the relief sought. Benjamin Moore’s position on the relief it sought kept evolving.

The Federal Court of Appeal noted that the Federal Court decision was akin to a declaration but the AG noted that the four elements for declaratory relief set out by the Supreme Court in Ewert v. Canada, 2018 SCC 30 at para 81 appeared not to have been addressed.

The Federal Court of Appeal provided a lengthy critique of the test adopted by the Federal Court finding it contrary to many binding decisions of the Courts. The Federal Court of Appeal found that no Canadian case had concluded that “once the claims have been purposively construed, these concepts cannot be considered to determine whether the subject matter falls within the definition of “invention” at section 2 and is not otherwise excluded” as the 3rd step of the test provides.

The Federal Court of Appeal concluded by allowing the appeal and substituting the following for the decision of the Federal Court on the test:

This redetermination of the patentability of these two applications should be carried out on an expedited basis, in light of the most current version of the MOPOP with the benefit of these reasons.

It will fall to law reformers to grapple with the difficult question of what is the appropriate subject matter for a computer-assisted invention.