PATENTABLE SUBJECT MATTER: BENJAMIN MOORE TEST REJECTED BY THE FEDERAL COURT OF APPEAL
Valmi Dufour-Lussier1 et Justin Freedin2
1 Ph. D., Lawyer, and Technical Patent Advisor, 2Engineer, Lawyer and Patent Agent in the Canada and in the United States, Partner
In June 2022, the Federal Court of Canada imposed a new test on the Canadian Intellectual Property Office to clarify the determination of patentability of an invention. This test, which was intended to create a more predictable framework for determining whether computer inventions are patentable, has now been set aside by the Federal Court of Appeal.
On 26 July 2023, the Federal Court of Appeal rendered a decision in the case the Attorney General, representing the Commissioner of Patents, against Benjamin Moore.
This was an appeal of a Federal Court decision which referred two patent applications, relating to a colour selection system, back to the Canadian Intellectual Property Office (CIPO) for redetermination of patentability on the basis of a three-step test proposed by the Intellectual Property Institute of Canada (IPIC), which was acting as an intervener in the litigation. These applications had been rejected by the Commissioner of Patents as being directed to non-patentable subject matter under section 2 of the Patent Act, which defines the different categories of a patentable “invention”.
In its decision, the Court of Appeal upheld the referral of the applications for redetermination, but rejected the test imposed by the Federal Court. It did not, however, propose a new test to replace it.
Patentable Subject Matter at CIPO
Until 2020, CIPO assessed patentable subject matter by first identifying the problem to be solved by the invention, and then establishing the proposed solution to the problem. The claims were then analyzed to identify elements essential to implementing the solution thus established. In this framework, a claim was considered to be patentable if at least one of its essential elements was directed to patentable subject matter. This approach made it difficult to predict the examination outcome of patent applications relating to computer-implemented inventions. In the Choueifaty decision, the Federal Court affirmed that this “problem-solution” approach was contrary to the jurisprudence of the Supreme Court of Canada.
Following the Choueifaty decision, CIPO published a practice notice that withdrew the problem-solution approach to claim interpretation, but reintroduced a concept inspired by the Federal Court of Appeal’s Amazon decision revolving around the notion of an “actual invention”. Under this framework, all elements of a claim are presumed to be essential when interpreting a claim to establish the fences of its monopoly. Nevertheless, patentable subject matter is determined only in relation to elements that form part of the “actual invention” defined by a claim. The actual invention is determined by identifying the problem and the solution, and the elements that form part of the actual invention may be different from the essential elements of the claim. In practice, this approach is slightly more permissive, but is still unpredictable.
The Federal Court of Appeal decision
In its decision, the Court of Appeal first pointed out that the Federal Court was not justified in imposing the test suggested by IPIC, since it was not part of the remedies sought by the plaintiff Benjamin Moore.
Moreover, the Court of Appeal opined that the proposed test raised several problems. On the one hand, the test required that the analysis of the exceptions prohibiting patents for mere scientific principles or abstract theorems under subsection 27(8) of the Act precede the analysis of the categories of “invention” provided for in section 2, which, in the Court of Appeal’s view, is not justified. Furthermore, the test seemed to imply that the analysis of patentable subject matter be limited to what is defined in subsection 27(8) and not take into account the aspects of novelty and ingenuity, thus ignoring the criteria imposed by section 2 of the Act and the related case law.
The Court of Appeal also denounced the practice, now common both at CIPO and in several Federal Court decisions, of too often relying on the principle of considering all elements of each claim to be essential unless established otherwise. The judgment goes on to state that while claim interpretation cannot be based solely on a problem-solution analysis, such an analysis can nonetheless provide valuable insight.
In rejecting the test suggested by IPIC, the redetermination of Benjamin Moore’s patent applications will be carried out in accordance with CIPO’s current practice established following the Choueifaty decision.
The Court of Appeal did not propose a test to replace the one it rejected. However, it has invited CIPO and IPIC to collaborate so that remaining issues can be properly addressed by the courts once and for all. The next opportunity to clarify issues relating to the patentability of computer inventions may arise during the hearing of the WorldGaming Network case. WorldGaming Network recently appealed a decision of the Commissioner in which a patent application was rejected as being directed to non-patentable subject matter under post-Choueifaty practice. There is a chance that this case may be heard by the Federal Court in 2024.
Until then, it remains difficult to predict the patentability of computer-implemented inventions in Canada. If you have any questions about this decision, or about your computer-implemented technology needs, please don’t hesitate to contact a member of our Emerging Technologies Group.
 Canada (Attorney General) v Benjamin Moore & Co., 2023 FCA 168, rev’g in part 2022 FC 923.
 RSC 1985, c P-4; Re Benjamin Moore & Co, 2020 CACP 15; Re Benjamin Moore & Co, 2020 CACP 16.
 Choueifaty v Canada (Attorney General), 2020 FC 837 at par 35–40, citing Free World Trust v Électro Santé Inc., 2000 SCC 66 and Whirlpool Corp. v Camco Inc., 2000 SCC 67.
 Canada, Canadian Intellectual Property Office, Patentable Subject-Matter under the Patent Act, 3 November 2020, online: <https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patentable-subject-matter-under-patent-act>.
 Canada (Attorney General) v Amazon.com, inc., 2011 FCA 328.
 Compare for instance Re Qiagen, 2021 CACP 30 (patent granted) and Re Landmark Graphics, 2021 CACP 31 (application rejected).
 Re Worldaming Network LP, 2021 CACP 43.