Expect Moore of the same from CIPO after Federal Court of Appeal rejects Patentable Subject Matter Test
August 21, 2023
By Ian McMillan, Louis-Pierre Gravelle, and Andrea Ngo
On July 26, the Federal Court of Appeal (FCA) released the long-awaited Benjamin Moore decision. Practitioners who were hoping that this decision would provide much needed clarity on the patentability of computer-implemented inventions will be disappointed.
In the last two decades, the Canadian Intellectual Property Office (CIPO) has issued successive practice notices and updates to the Manual of Patent Office Practice (MOPOP) articulating how examiners should assess subject matter patentability. All these practice notices share the approach of permitting examiners to disregard some elements of claimed inventions when assessing patentable subject matter despite the clear intention of inventors that these elements are essential (and are thus essential to the claims under Canadian jurisprudence). By disregarding claimed computer elements, Examiners can then reject the claims for lack of subject matter. This approach was and still is often used to reject claims for computer-implemented inventions. Courts rejected this approach, first in 2011 and again in 2020 as inconsistent with Canadian jurisprudence. Applicants and patent prosecutors are understandably frustrated with CIPO continuing to take this approach.
CIPO took this approach to reject two of Benjamin Moore’s patent applications relating to computer-implemented colour selection methods for lack of patentable subject matter. Benjamin Moore appealed to the Federal Court (FC). Frustrated with CIPO’s approach to subject matter patentability, the Intellectual Property Institute of Canada (IPIC), sought leave to intervene in the appeal, to draw the Court’s attention to “CIPO’s continued misapplication of the law”. The Court, when hearing the request for leave to intervene, invited IPIC to propose a test for the evaluation of patentable subject matter. IPIC then proposed a test (hereinafter referred to as the “Benjamin Moore test”).
The FC remitted the patent applications back to CIPO with instructions to follow the Benjamin Moore Test. The Attorney General (AG) representing CIPO appealed this decision.
Allowing the appeal, the FCA held that requirements imposed by the Benjamin Moore Test had no basis in law. For example, the Benjamin Moore Test required distinct aspects of patentability—subject matter, novelty, obviousness, and utility—to be considered in a certain order. And, in relation to subject matter, the Benjamin Moore Test required the statutory exclusions under subsection 27(8) of the Patent Act to be considered before section 2, contradicting the FCA’s statement in Amazon. The FCA also commented that it was unwise to attempt to settle issues that had not yet been considered by any court in Canada and that had not been adequately addressed by the parties. One such unsettled issue according to the FCA is whether novelty and obviousness may be considered when assessing subject matter.
These last statements highlight a conundrum facing practitioners. To date, all Canadian court decisions on the patentability of computer-implemented inventions have been appeals of CIPO decisions rejecting patent applications. Since the FCA decision in Amazon, the FC has consistently declined to construe the claims in these cases. Since the FC has also consistently held that CIPO has wrongly construed these claims, and since the claims must be properly construed before subject matter patentability can be assessed, this gives rise to a “Catch-22” situation with courts refusing or being unable to give proper direction to applicants (and CIPO) on the correct approach to evaluate patentable subject matter.
This decision seems likely to end whatever hope the FC’s decision had given applicants and practitioners that CIPO would modify its approach to examining computer-implemented inventions. Indeed, for patent applicants and prosecutors, the situation may now be worse than before the FC decision since many aspects of CIPO’s current practice (the revised version of MOPOP and practice notice PN 2020-04) are arguably endorsed by the FCA. For example, the FCA’s decision appears to provide support for CIPO’s longstanding practice of considering the “actual invention,” as potentially distinct from the claimed invention, when construing the claims to determine subject matter eligibility. Unfortunately, the FCA did not comment on what role the concept of the “actual invention” can play in determining subject matter eligibility given that claims are to be given the same purposive construction for all purposes, and the “actual invention” may, in CIPO’s view, differ from the “purposively claimed invention.”
The FCA’s comments that Canadian law is unsettled on whether novelty and ingenuity may be considered when determining subject matter eligibility may also make it easier for CIPO to reject claims for lack of subject matter.
It remains to be seen how this decision will affect examination of computer-related inventions, but it seems likely to be read by CIPO as authorizing it to continue to follow its own rules. One can hope however that CIPO will take heed of the FCA’s comments and “keep an open mind and not hastily conclude that the subject matter claimed is not patentable simply because it involves the use of conventional computer technology.”
 We use “CIPO” to refer to the Commissioner of Patents, patent examiners and the Patent Appeal Board.
 Questions of patentability depend on a proper assessment of the claimed subject matter. The correct approach to claim construction was defined by the Supreme Court of Canada in two landmark decisions issued in 2000. Free World Trust v Électro Santé Inc, 2000 SCC 66 [Free World Trust] and Whirlpool Corp v Camco Inc, 2000 SCC 67 [Whirlpool]. The principles of “purposive construction” outlined in these cases require, among other things, a determination of the “essential elements” of the claim – that is, elements are considered essential if it would be obvious to the skilled person that the element could not be varied or omitted without affecting the way the invention works, or if the inventor clearly intended the element to be essential. Free World Trust specifically rejected notions of the “spirit” or “substance” of the invention that were then in use by CIPO when assessing patentability.
 Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328 [Amazon FCA]..
The Court in Choueifaty pointed out that “the job of the Commissioner, like a judge at trial, is to determine validity” (ibid, at para 36), reaffirming that Examiners must apply the principles set out in Free World Trust when determining whether a claim element is essential.
 Benjamin Moore & Co. v. Attorney General Of Canada, 2022 FC 923 [Benjamin Moore FC]. Note that the two Patent Appeal Board (PAB) decisions in this case were decided before the Choueifaty decision. By the time the appeal was heard, Choueifaty had been decided, and all the parties agreed that CIPO had used the wrong test to construe the claims.
 Ibid, at para 44.
 Canada (Attorney General) v Benjamin Moore & Co, 2023 FCA 168 [Benjamin Moore FCA] at para 78.
 ibid at para 48.
 Ibid at para 30
 The FCA did not suggest that an assessment of the invention against the prior art should be conducted when considering subject matter eligibility but appeared to suggest that the advance made by the claimed invention based on a reading of the specification as a whole may be considered.
 Amazon FCA at paras 72 and 74.
 Benjamin Moore FCA at paras 56, 67-68, 70, 73-74,78, 95
 Whirlpool at para 49(b).
 Benjamin Moore FCA at para 85.
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