Over Attorney General’s Protests, Federal Court Intervenes in the Canadian Intellectual Property Office
August 19, 2022
By Andrea Uetrecht and Ian McMillan
The Canadian Intellectual Property Office (CIPO) rejected two of Benjamin Moore’s patent applications relating to computer-implemented colour selection methods for lack of subject matter. Benjamin Moore appealed to the Federal Court. After receiving leave to intervene in the appeal, the Intellectual Property Institute of Canada (IPIC) asked the Court to instruct CIPO to follow a framework (the IPIC Framework) when assessing patentable subject matter to address what IPIC called “CIPO’s continued misapplication of the law,”. Finding that the IPIC Framework was in keeping with the jurisprudence, the Federal Court remitted the patent applications back to CIPO for a new determination with instructions to follow the IPIC Framework.
This decision is important to Canadian patent law. More generally, it is noteworthy that the Federal Court has ordered a government agency to follow a framework proposed by a professional association.
Representing CIPO, the Attorney General had argued that i) the imposition of the IPIC Framework by the Court would encroach on the separation of powers and the intent of Parliament, ii) it was not the role of the Court to choose the interpretation of the Patent Act to be applied by CIPO, and iii) the IPIC Framework drew “bright lines that do not exist around the complex jurisprudence discussing patentable subject matter and computer-implemented inventions.” The Attorney General also argued that, as a threshold matter, CIPO had not yet had an opportunity to consider the claims at issue in Benjamin Moore in view of the most recent jurisprudence, as the claims had been rejected under a CIPO practice notice that was subsequently rejected by the courts.
The Court is not clear on why it imposed the IPIC Framework on CIPO despite the Attorney General’s protests. Given that the Commissioner had not had an opportunity to consider the applications in view of the latest jurisprudence (and given that all parties agreed that the Commissioner erred in her initial analysis), the Court could have simply remitted the matter for a new determination without instructing CIPO on how to make this determination. It was to avoid this outcome that IPIC intervened.
In the last two decades, 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). Examiners can thus reject claims for lack of subject matter by disregarding computer elements of the claims. This approach was and still is often used to reject computer-implemented inventions. Courts rejected this approach, first in 2011 and again in 2020 as inconsistent with Canadian jurisprudence.
CIPO issued its latest guidance (the 2020 Practice Notice) for patentable subject matter following the Chouiefaty decision in 2020. However, the 2020 Practice Notice again permits examiners to disregard certain elements of claimed inventions despite these elements being essential under Canadian jurisprudence (and despite court guidance that such an approach is incorrect). Unfortunately, the Court in Benjamin Moore declined to consider the 2020 Practice Notice and CIPO’s post-Chouiefaty practice, in part because CIPO had rejected the two applications prior to Chouiefaty under an earlier practice notice.
The IPIC Framework may be a welcome relief for patent applicants in computer-related fields. But given CIPO’s history of repeatedly writing and following its own rules “despite the lip service it pays to purposive construction and the jurisprudence,” this relief may be short-lived. Since the Court did not consider the 2020 Practice Notice, CIPO may take the position that it is consistent with the IPIC Framework and continue to apply the 2020 Practice Notice. And, if appealed, the decision may be overturned. The Federal Court of Appeal might, for example, agree with the Attorney General that the case was not yet ripe for review, or might take the view that the Federal Court was incorrect to adopt the IPIC Framework as the definitive test for patentable subject matter. The longstanding struggle over patentable subject matter between would-be patentees and CIPO seems likely to continue.
 We use “CIPO” to refer to the Commissioner of Patents, patent examiners and the Patent Appeal Board.
 Benjamin Moore & Co. v. Attorney General Of Canada, 2022 FC 923 [Benjamin Moore].
 The framework is as follows:
a) Purposively construe the claim [infra note 10];
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.
 Benjamin Moore at para 44.
 Supra note 2 at para 52, citations omitted.
 Attorney General's Memorandum of Fact and Law at para. 23.
 Ibid at para. 27.
 Ibid at para. 53.
 Ibid at para. 26.
 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]. After Free World Trust and Whirlpool, CIPO directed Examiners to search for the “actual invention” described in the application to determine whether the subject matter fell within the statutory definition of “invention” – independent of the subject matter defined by the claims. Amazon rejected this approach, affirming that Free World Trust and Whirlpool must be followed by CIPO when identifying the invention (Ibid, at para 43). Despite this, subsequent Examiner training materials directed Examiners not to strictly follow Free World Trust (see our article here).
 Yves Choueifaty v Attorney General of Canada, 2020 FC 837 [Choueifaty]. (see our article here). 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.
 The 2020 Practice Notice, is entitled “Patentable Subject-Matter under the Patent Act” (see our articles here and here). Although the Practice Notice specifically states that “the identification of the actual invention must be grounded in a purposive construction of the claim”, it goes on to state that the “actual invention may consist of either a single element that provides a solution to a problem or of a combination of elements that cooperate together to provide a solution to a problem”, and further that an element “that is identified as essential for establishing the fences of the monopoly under purposive construction is not necessarily part of the actual invention”. [emphasis added]
 Since the Court was considering what instructions should be provided to CIPO when remitting the matter to CIPO, it was arguably open to the Court to consider the 2020 Practice Notice; as the Court notes, the 2020 Practice Notice “sets out the approach to be followed by CIPO’s examiners”. Benjamin Moore at para 48.
 Ibid at para 31.
 That is, Court of Appeal may find that by imposing the IPIC Framework without allowing CIPO to first consider the applications at issue in view of the most recent jurisprudence and the 2020 Practice Notice, the Court merely assumed (without adequately justifying this assumption) that without such constraint, CIPO would continue to misapply the law. See the Attorney General's Memorandum of Fact and Law at para. 25. “Neither the Appellant, nor the Intervener can argue with certainty that the Commissioner will misapply the law of purposive construction or patentable subject matter on a reconsideration of the 130 and 146 Applications. They can only speculate.”
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