Update: On September 14, 2022, the Attorney General of Canada filed notice to appeal the Federal Court’s Benjamin Moore decision discussed below to the Federal Court of Appeal. Although the Attorney General of Canada may bring a motion to stay the order of the Federal Court requiring CIPO to use the three-step framework to assess patentable subject matter (discussed below) pending the appeal, such motions are rare. Accordingly, the three-step framework is expected to remain in force until the appeal is resolved. Stayed tuned for further developments.
Recently the Federal Court released a decision establishing a new three-step legal framework for assessing patentable subject matter, particularly as it relates to the patentability of computer-implemented inventions, in Benjamin Moore & Co v Canada (Attorney General),
2022 FC 923 [Benjamin Moore].
The decision rebukes several aspects of the Canadian Intellectual Property Office’s (CIPO) current “actual invention approach” and instructs CIPO to use the new framework instead.
This new development may allow applicants to overcome patentable subject matter rejections more easily in Canada going forward, although it remains to be seen exactly how each step of the framework will be applied. The Benjamin Moore decision
also remains subject to appeal until September 18, 2022.
In this article, we explore the historical context of CIPO’s approach to assessing patentable subject matter and discuss the new Benjamin Moore framework and how it could be applied.
Table of Contents
For nearly a decade prior to August 2020, CIPO utilized a “problem-solution approach” to determine essential elements of a claim. This “problem-solution approach” involved:
- identifying a problem disclosed by a patent application; and
- construing essential elements of a claim to be those elements which are “necessary to achieve a disclosed solution to the identified problem” (emphasis added).
The approach was problematic as it allowed CIPO to disregard well-known or conventional claim elements on the basis that these elements were not “necessary” for the characterized solution. This “problem-solution approach” was rejected
by the Federal Court in Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty].
The primary finding in Choueifaty held that the “problem-solution approach” only considered whether one of ordinary skill in the art would understand that a particular claim element could be varied (or omitted) without affecting
the way the invention works, while improperly disregarding the intention of the inventor.
We reviewed the impact of Choueifaty on CIPO’s previous “problem-solution approach” in an IP Update.
Following the Choueifaty decision, CIPO adopted its current “actual invention approach” for determining patentable subject matter. This current approach involves:
- identifying “essential elements” of a claim using purposive construction; and
- determining an “actual invention” of the claim, where the “actual invention” does not necessarily include every element identified to be essential in step 1 above, but “may consist of a single element that provides a solution to a problem or a combination of elements that cooperate together to provide a solution to a problem” (emphasis added), and then whether the determined “actual invention” has physicality.
In contrast to CIPO’s previous “problem-solution approach”, which determined “essential elements” of a claim as those elements required to achieve a disclosed solution, CIPO’s current “actual invention approach”
determines an “actual invention” of a claim as the combination of elements that cooperate together to provide a solution. CIPO’s current approach thus shuffles, but does not obviate,
the need for Examiners and applicants to identify a “problem” and a “solution” (arguably equivalent to identifying an inventive concept or identifying the substance of the invention) to determine what claim elements should
be included or omitted in a patentable subject matter assessment.
CIPO relies on Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328 [Amazon FCA]
and section 27(8)1 of the Patent Act as support for its distinction between the “essential elements” of a claim and the “actual invention”
of a claim. However, this distinction does not appear to have a firm basis in Canadian case law. For example, the Federal Court of Appeal in Amazon FCA indicated that both determination of essential elements and determination of what the
“inventor actually invented” are arrived at using the same purposive construction of claims.
We explained CIPO’s new “actual invention approach” to assessing patentable subject matter in a related IP Update.
Benjamin Moore establishes a new three-step legal framework incorporating section 27(8) into assessment of patentable subject matter
In Benjamin Moore, the Appellant (Benjamin Moore & Co) appealed decisions by the Commissioner of Patents refusing to grant Canadian patent application nos. 2695130 (CA ‘130) and 2695146 (CA ‘146). CA ‘130 and CA ‘146
both generally related to computer-implemented systems and methods for selecting colors based on “color harmony” and “color emotion”. Both applications were rejected under CIPO’s previous “problem-solution approach”.
The appeal did not turn on the subject matter of the claims of CA ‘130 and CA ‘146, the application of CIPO’s previous “problem-solution approach” to those claims, or even the propriety of the previous “problem-solution
approach”, as the parties agreed that the previous approach was incompatible with Canadian purposive construction jurisprudence and was expressly rejected in Choueifaty. At the hearing, the parties also agreed that CA ‘130 and
CA ‘146 should be remitted back to the Commissioner for re-assessment. The only issue being decided was what instructions should be provided to the Commissioner for this re-assessment.
With respect to these instructions, the Federal Court appeared to consider CIPO’s current “actual invention approach” and this current approach’s reliance on section 27(8) of the Patent Act, even though CA ‘130 and CA ‘146 were both decided under CIPO’s previous “problem-solution approach”. The Federal Court adopted, and instructed the Commissioner to use, the following three-step legal framework proposed by the Intervener (Intellectual Property Institute of Canada) to assess patentability of computer-related inventions:
Step I. Purposively construe the claim;
Step II. 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 (emphasis added); and
Step III. 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 (emphasis added).
The Federal Court also expressly found that CIPO’s current “actual invention approach” continued to include its previous improper “problem-solution approach”, as the determination of an “actual invention” outlined
in its current approach still required identification of a solution to a problem.
A brief discussion of each step of the Benjamin Moore legal framework follows below. However, given the recency of the Benjamin Moore decision, there is necessarily some uncertainty in how each step will be applied by the Commissioner
and CIPO going forward. The Respondent (the Commissioner represented by the Attorney General of Canada) also has until September 18, 2022 to appeal the decision.
Step I. Purposively construe the claims
Step I requires determining essential elements of a claim using purposive construction in accordance with the principles set out by the Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 and Whirlpool Corp v Camco Inc, 2000 SCC 67. Very briefly, purposive construction involves presuming that every element recited in a claim is essential, unless the following two questions are both satisfied to support a finding that a claim element is not essential:
- Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.
- Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.
Step II. Does the construed claim as a whole consist of only a mere scientific principle or abstract theorem?
Step II provides explicit guidance on how and when to consider section 27(8) of the Patent Act during an assessment of patentable subject matter.
This step is based on the test for practical application enunciated by the Supreme Court of Canada in Shell Oil Co v Commissioner of Patents,  2 SCR 536 and by the Federal Court of Appeal in Amazon FCA, whereby a disembodied idea (such as a mere scientific principle or a mere abstract theorem for example) is not
per se patentable, but may become patentable if it is coupled with practical application of that disembodied idea. “Practical application” is satisfied when the claimed subject matter
physical existence or manifests a discernable effect or change (see Amazon FCA). For example, the principle of thermal expansion is not itself patentable, but the moment that principle is practically
applied in a steam engine and claimed as such, even if the only improvement to the engine is the principle and application thereof, it becomes good patentable subject matter (see Boulton & Watt v Bull (1795), 2 H. Bl. 463).
Importantly, step II also emphasizes that the section 27(8) prohibition against mere scientific principle or abstract theorem is applied to “the construed claim as a whole”
(emphasis added), namely to all of the essential elements of the claim as purposively construed at step I above. This would appear to be contrary to CIPO’s current “actual invention approach”,
where the section 27(8) prohibition is applied to the “actual invention” of a claim, where the “actual invention” may be broader than the essential elements of the claim and is determined by identifying elements that cooperate
together to provide a solution to a problem.
Step III. Assess the construed claim for the remaining patentability criteria
Step III involves analyzing the construed claim under all remaining patentability criteria, including under statutory categories and for utility as required by section 2 of the Patent Act, for novelty as required by section 28.2 of the Patent Act,
for non-obviousness as required by section 28.3 of the Patent Act, and for any judicial exceptions such as methods of medical treatment or methods of applying professional skill.
Importantly, step III also serves as explicit instruction that any analysis of novelty or non-obviousness of the claim is to be performed after practical application is found in step II above, and is not to be incorporated into either the essential elements determination in step I or the practical application assessment at step II. This would again appear to be contrary to CIPO’s current “actual invention approach” as applied to computer-implemented inventions, where the “actual inventions” of such inventions are often limited to the novel and non-obvious aspects thereof and any claimed computer elements that CIPO believes is performing conventional or generic functions are disregarded.
Benjamin Moore establishes a succinct three-step legal framework for assessing patentable subject matter, particularly for computer-implemented inventions.
This framework should make it more difficult for CIPO to continue to rely on the portions of its current “actual invention approach” which (i) brings in identification of a problem and a solution to determine an “actual invention”
of a claim, (ii) applies the section 27(8) prohibition to an “actual invention” which is different from the purposively construed claim as a whole and (iii) disregards computer elements in a claim which may perform conventional or generic
computer functionality. This framework may also allow applicants to overcome patentable subject matter rejections more easily in Canada going forward.
However, as noted briefly above, there is necessarily uncertainty in how each step of the Benjamin Moore framework will actually be applied by the Commissioner and CIPO in the future. The decision also remains subject to appeal.
In the meantime, applicants should seek advice and guidance from experienced patent counsel on how the Benjamin Moore framework could apply to patentable subject matter, and the impact on their Canadian application(s), computer-implemented or otherwise.
If you have questions or require further information, please contact a member of the Patents group at Smart & Biggar.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
1. Section 27(8) of the Patent Act provides that “[n]o patent shall be granted for any mere scientific principle or abstract theorem”