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In Benjamin Moore & Co v Attorney General of Canada, Federal Court adopts new statutory subject-matter test for computer implemented inventions

Authored byAbbas Kassam and Benjamin Mak

On June 17, 2022, the Federal Court of Canada issued its judgment in Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923. The case defines a new test for statutory subject matter under the Patent Act as applied to computer-implemented inventions.

The case was an appeal from a decision of the Patent Appeal Board at the Canadian Intellectual Property Office (CIPO) in which patent eligibility was denied to two patent applications filed by Benjamin Moore & Co. The inventions claimed in the two applications relate to computer-implemented systems and methods for selecting colors based on scientific findings associating certain mathematically determined color values with human psychophysical responses.

The appeal was argued on behalf of Benjamin Moore & Co. by a litigation team at Ridout & Maybee LLP consisting of Matt Norwood, Ben Mak, Abbas Kassam, and Erin Stuart. The Intellectual Property Institute of Canada (IPIC) joined the case as a third party intervener.

Ultimately, the Court adopted the test for statutory subject matter in computer implemented inventions proposed by IPIC and endorsed by Benjamin Moore & Co. The test requires that CIPO evaluate statutory subject matter during examination of computer-implemented inventions by performing three steps:

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.

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 Court ordered the two Benjamin Moore & Co. patent applications to be sent back to CIPO for a new determination of patentability under the new test.