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The Curious Case of Benjamin Moore

June 20, 2022

The Canadian jurisprudence on patentable subject matter has evolved since the Supreme Court of Canada’s pronouncements in Free World Trust and Whirlpool, but clarity of guidance regarding eligibility has remained elusive for patent rights owners and practitioners. The Federal Court’s (the “Court”) decision in Benjamin Moore & Co. v. Attorney General of Canada (2022 FC 923) appears to be a step in the right direction for establishing a consistent and predictable framework for assessing questions of eligibility.

Benjamin Moore & Co appealed decisions of the Commissioner of Patents that rejected the claims of Canadian Patent No. 2695130 (the “130 Application”) and Canadian Patent No. 2695146 (the “146 Application”). The 130 and 146 Applications relate to “a computer-implemented color selection method that uses experimentally derived relationships for color harmony and color emotion”. On the recommendations of the Patent Appeal Board, the Commissioner found that the pending claims of the applications did not comprise patentable subject matter. The Commissioner applied a “problem-solution” approach to claims construction, concluding, for each application, that (1) there was no computer problem to overcome and as a result, (2) the computer and associated components recited in the claims were not essential elements of the claimed invention.

CIPO had previously adopted the “problem-solution” approach to construing claims and, in particular, for identifying the essential elements of patent claims. A patent examiner first identifies a problem addressed by the application and the solution as contemplated by the inventors. Essential elements are identified as those required to achieve the disclosed solution as claimed. This approach to assessing essentiality was rejected as incorrect in the Court’s ruling in Choueifaty v. Attorney General of Canada (2020 FC 837).  IPIC, as intervener in the present case, argued that CIPO continues to use the wrong approach in spite of the Choueifaty decision and invited the Court to provide guidance regarding a revised framework for evaluating patent eligibility.

The Court agreed with the parties that the Commissioner erred by applying the wrong legal test for claim construction and patentable subject matter. The Court also endorsed IPIC’s proposed framework for assessing patentability of computer-implemented inventions, which requires patent examiners to:

  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 130 and 146 Applications were remitted to CIPO for a new determination, with instructions on the proper procedure for claims construction and identifying patentable subject matter.

The Court’s decision reinforces Canadian patent law’s divorce from the “problem-solution” approach to claims construction. The legal framework that was proposed by IPIC in the present case is, in the Court’s view, the proper legal test for assessing eligibility of computer-implemented and is consistent with an invitation to adapt “our understanding of the nature of the ‘physicality requirement’” as technology advances. Interestingly, this Court-endorsed framework bears some resemblance to USPTO’s own subject matter eligibility guidance, which provides for a structured approach that includes evaluating whether recited judicial exceptions of impugned claims are “integrated into a practical application”. While the scope of the Court’s decision is primarily limited to computer-implemented inventions, it remains to be seen whether the consistency and predictability which may be afforded to the eligibility analysis by the legal framework can be extended to other types of inventions and bring Canadian patent law in closer alignment with the eligibility evaluation schemes of other jurisdictions.