PATENTABLE SUBJECT MATTER: FEDERAL COURT IMPOSES A NEW TEST ON CIPO
Patentable Subject Matter:
Federal Court imposes a new test on CIPO
ROBIC — Emerging Technologies Group
A recent decision of the Federal Court of Canada imposes a new test on the Canadian Intellectual Property Office to clarify the determination of whether an invention is patentable. This test, in line with Canadian case law, promises to be particularly useful in the field of computer-implemented technologies.
On June 17, 2022, the Federal Court issued a decision in the case of Benjamin Moore against the Attorney General, representing the Commissioner of Patents. The Court sent two patent applications back to the Canadian Intellectual Property Office (CIPO) for redetermination of patentability using an evaluation framework developed by the Intellectual Property Institute of Canada (IPIC). These applications were rejected by Commissioner as being directed to unpatentable subject matter under section 2 of the Patent Act, which defines what constitutes an invention, and therefore patentable subject matter.
Benjamin Moore is appealing the Commissioner’s decision to reject two patents related to a computer system for selecting colours based on a person’s emotions. The decision is based pre-Choueifaty practice, therefore both parties agreed that the two cases should be referred back to CIPO for re-evaluation of the subject matter. Nonetheless, they disagreed on the instructions that should be sent to the Patent Appeal Board.
IPIC, a professional association of IP lawyers and patent and trade mark agents, sought leave to intervene and offered its own framework to evaluate whether a claim’s subject matter is patentable, since CIPO’s framework does not seem to follow the courts’ teachings on claim construction.
Patentable Subject Matter at CIPO after Choueifaty
Before Choueifaty, 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 the elements essential to the implementation of said solution. In this framework, a claim was considered to be directed to patentable subject matter if at least one of its essential elements was directed to patentable subject matter. This approach made it difficult to predict the outcome of the examination of a patent application for a computer-implemented invention. In the Choueifaty decision, the Court stated that this “problem-solution” approach was not in accordance with Supreme Court of Canada’s decisions on claim construction.
Since then, CIPO issued a practice notice that removed the problem-solution approach, but reintroduced a concept inspired by the Federal Court of Appeal’s Amazon decision, which revolves around the notion of “actual invention.” Under this framework, there is a presumption that all elements of a claim are essential. However, the actual invention is established by analyzing the problem and the solution, and retaining only those elements of the claim that are essential to the implementation of the actual invention. In practice, this approach is slightly more permissive, but it remains unpredictable and still does not obey Canadian case law
The framework proposed by the IPIC and adopted by the Federal Court is a three-part test:
- The claim must be construed purposively;
- The claim as a whole must be analyzed to determine whether it is directed to a mere scientific principle or theoretical conception, or whether it is directed to a practical application employing a scientific principle or theoretical conception; and
- If a practical application is identified, the claim is finally assessed as to the other criteria for patentability, namely the statutory category of the invention (art, process, machine, manufacture or composition of matter), judicial exceptions, novelty, obviousness and utility.
In addition to being consistent with Canadian case law, this framework is likely to make preliminary opinions on whether a computer-implemented invention comprises patentable subject matter much more reliable. It will certainly be used by the Appeal Board when it hears Benjamin Moore’s appeals anew. Many hope that CIPO will use it to update its practice.
Meanwhile in the United States
United States law also provides that any new and useful process, machine, manufacture or composition of matter may be patented. However, American courts have decided to prohibit claims directed to certain specific subject matter. Since Alice, the US Patent Office and the courts have used a two-step test to determine whether a claim is directed to patentable subject matter having regard to these judicial exceptions. This test has been applied in an inconsistent manner by the US Federal Courts. The US Commissioner of Patents’ guidelines on patentable subject matter are now voluminous and also inconsistently applied by Examiners, creating a lack of predictability in the examination of patent applications filed in the US.
In December 2020, American Axle & Manufacturing filed a petition with the Supreme Court of the US, appealing a decision that rejected a claim to a new method of manufacturing a propeller shaft as being directed to a law of nature. At the request of the Supreme Court, the Solicitor General filed a brief on behalf of the United States on 24 May 2022 stating that the applicable test is in dire need of clarification and asking the Court to hear the case. Somewhat surprisingly, the Court dismissed the appeal on 30 June 2022. It would therefore appear that US patent practitioners will be kept in limbo for the time being.
In light of recent decisions in both Canada and the US, it remains difficult to predict the patentability of computer-related inventions. If you have any questions about this decision or your computer-implemented technology needs, please feel free to contact a member of our Emerging Technologies Group by following this link.
 Benjamin Moore & Co v Canada (AG), 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 (AG), 2020 FC 837.
 Choueifaty, supra note 4 at paras 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://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04860.html>
 Canada (AG) v Amazon.com Inc., 2011 FCA 328.
 Compare for instance Re Qiagen, 2021 CACP 30 (granted) and Re Landmark Graphics, 2021 CACP 31 (rejected).
 35 USC § 101.
 Alice Corp. v CLS Bank International, 573 US 208 (2014).
 American Axle & Manufacturing, Inc. v Neapco Holdings LLC, 309 F Supp 3d 218 (D Del 2018), aff’d 939 F 3d 1355 (Fed Cir 2019), aff’d in part 966 F 3d 1294 (Fed Cir 2020), leave to appeal to SCOTUS refused, No 20-891 (US 2022).
 Brief for the United States as amicus curiae, American Axle & Manufacturing, Inc. v Neapco Holdings LLC, supra note 8.