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 ” mere scientific principle or abstract theorem. “exception given in s. 27 (8) sa 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 simple scientific principle, 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. companions
The real debate on appeal is what guidance, if any, the Federal Court should offer to CIPO for such reconsideration.
The Attorney General of
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 the problem-solving approach, IPIC proposes the following three-part test:
- In the deliberate sense of claim;
- Ask if the interpreted claim generally consists only of a scientific principle or abstract theorem, or if it contains 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 test, the Court held that the “physical necessity” provided by
Implications for Patenting Computer-implemented Inventions in
Overall, the Court held that the proposed IPIC framework is consistent with the teachings of both.
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 forever
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