Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168.
On July 26, 2023, the Federal Court of Appeal (FCA) released its long-awaited decision on the patentability of computer-implemented inventions. The FCA reiterated the importance of judicial minimalism and rejected a structured analytical framework, favouring a more flexible approach based on considerations of precedents to date and ultimately agreeing1 with the guidance in Amazon.2 For applicants and professionals looking for predictability in the law around Canadian software patents, the decision will be very disappointing.
Benjamin Moore's Patent Applications
In 2020, Benjamin Moore applied for Patent Nos. 2,695,146 ("the '146 Patent") and 2,695,130 ("the '130 Patent"), related to software for navigating a colour bank by "emotion" and "harmony." The Commissioner of Patents refused the patents, finding them non-patentable. The '146 Application focused on colour combinations based on user-selected harmony or emotion values. The '130 Application centered on providing a combined colour score from a selection of at least three colours. The Commissioner's refusal was based on the determination that the essential elements didn't include the computer or associated components.
IPIC's Test for Assessing Patentability
As previously reported, the Commissioner's decision was appealed to the Federal Court (FC), and the Intellectual Property Institute of Canada (IPIC) was granted leave to intervene. Considering Choueifaty,3 the Federal Court rejected the Commissioner's problem-solution approach for determining patent claims' essential elements. Instead, it advised a single claim construction for all patent issues and accepted IPIC's proposal for a binding test on computer-implemented inventions' patentability:
- In her assessment of the '130 and '146 Applications, the Commissioner of Patents is instructed to:
a) Purposively construe the claim;
b) 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
c) 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 matter was remitted back to the Commissioner who appealed.
Returning to the Amazon Test
A key issue was whether the Federal Court wrongly set a binding test for assessing subject matter patentability by the Commissioner.
The FCA stated that the Commissioner's error was not in considering the problem and solution but in making them the sole basis for identifying essential elements of the claims.
The Federal Court of Appeal identified several errors with the test outlined by the Federal Court:
- The test required a specific order for assessing patentability, contradicting Amazon,4 where no particular order for patentability elements was needed.
- Subject matter patentability begins with identifying the "invention" category, but computer-implemented invention isn't distinct, making the test's order irrelevant.
- Judicial exclusions should be assessed after determining if the subject matter is an invention.
- Criteria like novelty, obviousness, and utility shouldn't be considered when defining an invention.
The Federal Court of Appeal reiterated the importance of judicial minimalism and that "interveners cannot seek a remedy that was not sought by the parties themselves". 5
The decision also included a very interesting hypothetical example about how a "method proposed in [a] book" about life decisions, could potentially include statutory subject matter,6 setting a remarkably inclusive potential for statutory subject matter given contradictory decisions about professional skill, such as Lawson. 7
While the decision canvassed many of the leading cases on statutory subject matter, it is noteworthy the decision did not discuss the Supreme Court's decision in Harvard College v. Canada (Commissioner of Patents)8 which did undergo a pure construction of s. 2, while ignoring elements of novelty and utility.
The applications were remitted to the Commissioner with the following direction:
"This redetermination of the patentability of these two applications should be carried out on an expedited basis, in light of the most current version of the MOPOP with the benefit of these reasons."
Commentary
While it will take time to see the effects of this decision, the FCA clearly does not want to provide clarity around the patentability of software inventions. The case lacks a clear standard for computer -implemented inventions and seems to give CIPO fairly broad discretion given the vagueness of the decision. The FCA does note that the "Commissioner should keep an open mind and not hastily conclude that the subject matter claims is not patentable simply because it involves the use of conventional computer technology".
Footnotes
1. Para 57.
2. Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328 (Amazon)
3. Choueifaty v. Canada (Attorney General), 2020 CF 837.
4. 2011 FCA 328 at para 38.
5. 2023 FCA 168 para 29
6. 2023 FCA 168 para 92
7. 2023 FCA 168 para 92 at para 55 citing Lawson v Commissioner of Patents (1970), 62 C.P.R. 101 (Ex. Ct. per Cattanach J.)
8. 2002 SCC 76
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