The Federal Court of Canada recently ruled on Benjamin Moore & Co. v. Canada (AG), 2022 FC 923, directs Canadian patent examiners to use a new legal framework when they assess computer-implemented inventions for subject-matter patentability. The three -part trial was proposed by the Intellectual Property Institute of Canada (IPIC), which is involved in the case. IPIC is represented by a Fasken team consisting of Julie Desrosiers, Eliane Ellbogen, and Michael Shortt. It is hoped that this new test will clarify and simplify the evaluation of the patentability of computer-implemented inventions and ensure that they are not unfairly denied patentability status going forward. Patent applicants and their agents in Canada should consider the new framework.
Benjamin Moore has appealed to the Canadian Intellectual Property Office’s (CIPO) denial of two patent applications for a computer-assisted method of selecting paint colors that match feelings and emotions. CIPO denies patent applications on the grounds that they are not addressed to the patentable subject, but merely an abstract theorem.
CIPO bases its denial on (1) a so-called “problem-solution” approach to subject-matter patentability, which it uses for computer-implemented inventions, and (2) an overly broad application of ” just scientific principle or abstract theorem. ”exception provided for in s. 27 (8) of Patent Act.
The problem-solving approach allows CIPO to disregard the computer hardware elements of the claims, as opposed to the requirement that the required claim elements be decided based on the purpose of the construction. CIPO justifies ignoring these elements on the basis that they are not necessary to achieve the particular solution obtained by CIPO from the patent. This is problematic for patent applicants, because once the computer elements of a claim are removed as unnecessary under the problem-solving procedure, the CIPO will say that the remaining elements define a abstract idea or scientific principle only, which leads to the claim as a whole being rejected as a non-patentable subject.
Arguments on Appeal
The appeal was somewhat unusual because all parties agreed that the CIPO was at fault and that the case should be returned to the CIPO for reconsideration. Associate Chief Justice Gagné agreed with the Federal Court, reiterating that the “problem-solution” approach was apparently rejected by Choueifaty v. Canada (AG). Free Trust in the World.
The real debate on appeal is what guidance, if any, the Federal Court should offer to CIPO for such reconsideration.
The Attorney General of Canada argued against the Federal Court issuing guidance on the procedure that CIPO must follow if the case is returned to it.
In contrast, IPIC urged the Court to provide clear guidance on how CIPO should assess the subject-matter patentability of computer-executed inventions. CIPO submitted that such guidance was necessary because of CIPO’s systematic failure to comply with binding case law, which led it to assess computer-executed inventions through the wrong legal framework. In fact, follows Choueifaty, CIPO issued a practice notice aimed at clarifying the applicable legal framework in the case of computer-implemented inventions. However, the practice notice continues to instruct patent examiners to use the same approach to solving the problem that was recently rejected by the Federal Court. The only change is that the problem-solving thinking appears under a slightly different name at a later stage of testing.
Instead of problem solving, IPIC proposes the following three -part test:
- Intentionally mean claim;
- Ask if the interpreted claim generally consists only of a scientific principle or abstract theorem, or if it consists of a practical application that uses a scientific principle or abstract theorem; and
- If the defined claim constitutes a practical application, examine the defined claim for the remaining patentability practices: statutory categories and judicial exclusions, as well as new, explicit, and use.
Benjamin Moore endorsed this framework in the oral argument at the appeal hearing.
The Federal Court adopted the IPIC trial, and ordered CIPO to use it during the reconsideration of Benjamin Moore’s patents. In adopting the IPIC trial, the Court held that the “physical necessity” granted by the Federal Court of Appeal in 2011 Amazon The case is subject to evolution as the technology itself advances. As IPIC argues, in the case of computer programs, it is an artificial distinction to say that there is no “visible effect or change” that could result from a computer-based program, and is therefore arbitrary. ensuring that computer -implemented inventions do not have the necessary “physicality” to be patentable. The Court agreed that CIPO’s approach to implementing computer inventions misunderstood the Federal Court of Appeal’s decision in Amazon.
Implications for Patenting Computer-Implemented Inventions in Canada
Overall, the Court confirmed that the proposed IPIC framework is in line with the teachings of the Supreme Court and the Federal Court of Appeal, as well as ensuring the consistency of the treatment of patents before the CIPO and before. of the Courts and that computer -implemented inventions have received. same treatment during the patent examination as in any class of invention. Unless and until this decision is reversed on appeal, it covers land law, which binds CIPO patent examiners and patent applicants. In fact, because of the Supreme Court’s ruling R v Sullivan2022 SCC 19, it now binds all Federal Court judges facing the same issue.
This decision will provide the necessary clarification on how CIPO examines patent applications for computer-implemented inventions. This is especially important because patent applications for computer-implemented inventions have grown tremendously in the last twenty years, especially those with artificial intelligence technologies.
The Attorney General has until July 18 to file a notice of appeal if the government seeks to challenge this decision, but an appeal is not guaranteed, as nothing has been obtained by Choueifaty. In light of the Court’s decision, it is recommended that patent applicants review current or future applications in accordance with the new framework. Applicants may also consider returning applications that were previously abandoned or appealing a denial of an application where CIPO relies on a procedure that is now considered inconsistent with the proposed IPIC framework.