The Federal Court recently ordered the Commissioner of Patents to follow a framework on assessing patentable subject matter. Significantly, the framework endorsed by the Court, in its decision rendered on June 17, 2022, was proposed by the Intellectual Property Institute of Canada (IPIC), which was granted leave to intervene to provide guidance to the Court on ensuring consistency between the application of patent law to computer-implemented inventions and other types of inventions.

In Benjamin Moore & Co. v. A.G. (Canada), 2022 FC 923, an Applicant appealed decisions by the Commissioner of Patents rejecting two patent applications, on the basis that they failed to be directed to statutory subject matter under section 2 of the Patent Act and that they fell within the statutory exception in subsection 27(8) which prohibits patenting a mere scientific principle or abstract theorem. Canadian Patent Application Nos. 2,695,130 and 2,695,146 claimed computer-implemented methods for color selection.

The Applicant, Attorney General representing the Commissioner, and IPIC as Intervener all agreed that the Commissioner erred in applying a “problem-solution” test for claim construction and for patentable subject matter. However, they differed in their views on whether the Court should dictate the proper test to be applied.

The Commissioner erred in applying the wrong legal test for claim construction and patentable subject matter

The Court reviewed the relevant case law, which it summarized by setting out that claims must be construed using a purposive construction approach, the purposive construction approach involves identifying elements as essential or non-essential, and the Commissioner must use the purposive construction approach when determining whether claims relate to statutory subject matter.

The Court found that, in the Commissioner’s decision, instead of using the purposive construction approach to determine whether the actual invention was patentable, the Commissioner construed the claims by identifying only the novel aspects of the invention, and determined that those novel aspects were unpatentable as a mere scientific principle or abstract theorem. The Commissioner also concluded that since there was no computer problem to be solved, the computer and associated components were not essential elements of the invention. However, precedent by the Supreme Court of Canada requires that claim construction be made prior to conducting the novelty analysis. The Court also found that the problem-solution approach is not the test dictated by the Supreme Court of Canada to determine whether an element is essential or not to an invention.

The matter should be remitted to the Commissioner with instructions

IPIC, Canada’s professional association of patent agents, trademark agents, lawyers and academics practicing in intellectual property, intervened to provide guidance to the Court to help ensure consistent application of patent law. IPIC argued that instructions by the Court were warranted in this case, because the Commissioner applied the wrong test in the examination guidelines at issue, and continues to misapply the law in the current Practice Notice which still includes a problem-solution approach (PN2020-04, dated November 3, 2020 titled “Patentable Subject-Matter under the Patent Act”). To that end, IPIC proposed a framework consistent with case law. The Applicant agreed with the Intervener that the proposed framework was an appropriate statement of the law for Commissioner to follow. The Attorney General suggested that the Court simply set aside the Commissioner’s decision refusing the applications and remit the matter back to the Commissioner for reconsideration. Ultimately, the Court held that the proper legal test to be applied was a question of law well within the purview of the Court, and the framework proposed by IPIC and endorsed by the Applicant was consistent with case law and ensured consistency between the application of patent law to computer-implemented inventions and other types of inventions. Accordingly, the Court remanded the matter back to the Commissioner and instructed the Commissioner to follow the framework proposed by IPIC, on the proper procedure for claim construction and assessing patentable subject matter, namely:

  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 Attorney General may appeal the decision to the Federal Court of Appeal within 30 days (excluding the summer recess in July and August). It remains to be seen whether the Attorney General will appeal, given that the only issue left for the Court to decide is whether the Court should instruct the Commissioner on the proper test. In this regard, the Attorney General did not take a position on the correctness of the framework proposed by IPIC, and the Court considered its instruction to follow a framework consistent with the law to be within its purview.

Way forward

It is expected, according to IPIC’s factum, that the framework will resolve the impasse for computer-implemented inventions, which inventors and patent applicants have faced over the past ten years as a result of the Canadian Intellectual Property (CIPO)’s improper approach to claim construction and patentable subject matter.

After submitting its factum, but before the Federal Court issued its decision, IPIC recommended the same framework in response to a public consultation by CIPO (IPIC Response to CIPO’s Consultation on changes to MOPOP resulting from “Patentable Subject-Matter under the Patent Act” dated February 25, 2022). Its discussion of the framework there provides insight on how the framework may be applied going forward. In step (a), the purposive construction is made in accordance with precedent by the Supreme Court. In step (b), the assessment of patentable subject matter considers whether the “the construed claim as a whole” – corresponding to the exclusive right defined by a claim, rather than an “inventive concept” or “actual invention” that depends on the problem-solution asserted by an examiner – consists of only a disembodied idea such as a mathematical formula contrary to subsection 27(8). Alternatively, step (b) considers whether the “the construed claim as a whole” comprises a “practical application”, which is in keeping with the broad characterization given by the Supreme Court, may be found in something with “physical existence” or something that manifests a “discernible effect or change”, and avoids unjustified additional requirements that the latter be physical and it belong to “manual or productive arts”. In step (c), the construed claim is assessed for falling within a statutory category under section 2 and judicial exclusions such as methods of medical treatment and higher life forms, as well as for other patentability requirements.

In view of the Federal Court’s decision, Applicants should consider reinstating applications that were abandoned or appealing Commissioner decisions rejecting their applications, where CIPO relied on a problem-solution approach in its approach to claim construction and patentable subject matter or other ground which is inconsistent with the framework.