IP monitor: Federal Court of Canada continues to support patentability of computer-implemented inventions

In Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923¹, the Federal Court of Canada set aside the Canadian Intellectual Property Office’s (CIPO) refusal of patent applications for two computer-implemented inventions relating to colour selection methods using experimentally derived relationships for colour harmony and colour emotion (the Federal Court of Canada remitted Canadian Patent Applications No. 2,695,130 and No. 2,695,146, directed to a “Colour Selection System”). 

The court remanded the applications back to CIPO for reconsideration in light of the court’s decision in Choueifaty v Attorney General of Canada (Choueifaty),² which also overturned refusal of an application for a financial technology invention on patent eligibility grounds. Please see our previous IP monitor on Choueifaty for more information.

As detailed below, in Benjamin Moore the Federal Court of Canada set out a clearer three-part test for patentability, replacing the approach taken by the commissioner and CIPO during the examination of these patent applications.   

CIPO’s problem-solution approach rejected 

The commissioner had incorrectly adopted the problem-solution approach by construing the claims from the perspective of the “problem to be solved” and the “solution brought by the invention” while also rejecting the claims by broadly applying the “mere scientific principle or abstract theorem” exception in section 27(8) of the Patent Act. The commissioner construed the claims of both patent applications by identifying only the novel aspects of the inventions and determined that those novel aspects were unpatentable as “mere scientific principles or abstract theorems.” Since there was no computer problem to be solved, the commissioner held that the computer and associated components were not essential elements of the invention. 

The Federal Court explained that the commissioner applied the wrong test when rejecting the claims by following the Manual of Patent Office Procedures (MOPOP)’s problem-solution approach, which was found to be incompatible with Whirlpool Corp v Camco Inc. (Whirlpool)³, Free World Trust v Electro Sante Inc. (Free World Trust)⁴, and Canada (Attorney General) v Amazon.com Inc. (Amazon.com)⁵. 

CIPO applies its own “problem-solution approach” despite referring to the “purposive construction” established by the jurisprudence⁶. Whether the patent applications disclose patentable subject matter is a mixed question of fact and law. The court remitted the applications and explained that in applying the incorrect test to assessing the patentability of computer-implemented inventions, the commissioner did not make the requisite factual findings that would allow this court to analyze her decision on patentable subject matter.

Three-part test for patentability

The Intellectual Property Institute of Canada (the intervener) was granted leave to intervene in these appeals and stated CIPO continues to use the wrong approach, despite the Federal Court’s ruling in Choueifaty⁷. The intervener stated the question as to the correct approach to assessing the subject matter patentability of computer-implemented inventions “transcends the interests of the immediate parties to these appeals” and is “fundamental to the Canadian patent system.” 

The Federal Court referred to CIPO’s updated Practice Notice entitled “Patentable Subject-Matter under the Patent Act,” which was released following Choueifaty. This Practice Notice, the Federal Court noted, still includes the inappropriate problem-solution approach (stated on its page 2 of 5), despite the findings in Choueifaty. The Federal Court disagreed with the respondent’s submission that the Practice Notice is an operational policy and clarified that the Practice Notice is not merely an operational policy because it sets out the approach to be followed by CIPO’s examiners.

The appellant and intervener further argued CIPO regularly misconstrues the patentability of computer-implemented inventions, incorrectly excluding them under section 27(8) of the Patent Act. In particular, the Supreme Court of Canada’s Shell Oil Co v Commissioner of Patents⁸  decision established that practical applications of scientific principles and abstract theorems can constitute patentable inventions. This was further confirmed by the Federal Court of Appeal in Amazon.com to be consistent with the correct purposive construction approach. 

The appellant submitted that the court should remit the matter to CIPO and make an order directing it to re-examine the patent applications in accordance with the principles of Free World Trust, Whirlpool, and Shell Oil as guidance for reconsideration. The intervener further submitted that the Federal Court should provide instructions to CIPO to use the appropriate legal test. 

The Federal Court noted the legal framework proposed by the intervener and appellant were in keeping with leading cases by the Supreme Court of Canada (Free World Trust 2000 SCC 66, Whirlpool v. Camco Inc, 2000 SCC 67 and Shell Oil), and with the Federal Court of Appeal’s invitation to adapt “our understanding of the nature of the ‘physicality requirement’”⁹ as technology advances.

The Federal Court allowed the appeals and set aside the commissioner’s refusal of the patent applications for the colour selection system.

The Federal Court affirmed that the new assessment of the two applications by CIPO for patentability be based on the following three-part test:

• 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.

The decision directs CIPO to make a new determination using the proper procedure for claims construction. With this clearer test, new, inventive and useful practical applications having a computer intermediary are likely to move more easily to becoming patents in Canada.