Attorney General of Canada v Benjamin Moore & Co., 2023 FCA 168 concerned the appeal of Federal Court decision 2022 FC 923. The underlying Federal Court decision had set out binding instructions in the form of a test for CIPO to follow to when determining the patentability of computer-implemented inventions. The FCA allowed the Appeal in part, deleting the test that was set out in paragraph 3 of the Federal Court’s judgement.
Benjamin Moore filed two patent applications (CA2,695,130 and CA2,695,146) relating to colour selection systems. The Commissioner refused the applications on the basis that they were directed to non-patentable subject matter. However, the Commissioner’s decision came out before CIPO’s updated Practice Notice PN2020-04 which took into account the Federal Court’s Yves Choueifaty v Attorney General of Canada, 2020 FC 837 decision.
The Federal Court determined that CIPO had failed to apply the proper test to determine the essential elements of the claims in the applications. The Federal Court adopted the following test, which was advanced by IPIC in its capacity as an intervenor:
 In her assessment of the 130 and 146 Applications, the Commissioner of Patents is instructed to:
- Purposively construe the claim;
- 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
- 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 Federal Court erred in issuing the binding instructions for CIPO’s redetermination.
First, the FCA explained there was no provision in the Federal Courts Act granting the Federal Court the power to issue these kind of general instructions in the context of a statutory appeal (apart from applying Rule 64, which was not done in this case).
The FCA found that step a) of the test did not provide any clarification for the purposive construction exercise, but simply stated it must be completed – an issue that was not in dispute.
The FCA explained that at step b), the FC created a dichotomy between the statutory exclusions set out in section 27(8) of the Patent Act and the reasoning adopted in Shell Oil and Amazon (new knowledge that needs to be practically applied) in determining whether the subject matter is patentable as an “art.” By adding the word “only” and “or whether” at step b), this implied an interpretation of subsection 27(8).
The FCA found the FC Test went beyond the two elements of patentability assessment (claims construction and identifying patentable subject matter) by dictating the order in which the Commissioner should assess the other aspects of the patentability analysis (sections 28.2 and 28.3 of the Patent Act: novelty, obviousness, and utility). Only at step c) did the Commissioner consider the statutory categories set out in section 2 of the Patent Act. The requirement to assess validity in a particular order directly contradicted Amazon which explained that after purposive construction is completed, the assessment of patentable subject matter need not follow any particular order.
The FCA concluded that apart from paragraph 3a, the FC test was not supported by Canadian case law and was contrary to Amazon. Further the FCA explained the test dealt with issues that have not yet been considered, namely whether once claims have been construed, novelty or ingenuity cannot be considered to determine whether the subject matter falls within the section 2 definition of “invention” and/or the extent to which consideration of novelty or ingenuity in the application of section 2 differs from sections 28.2 and 28.3 of the Patent Act. The FCA therefore ordered that paragraph 3 of the FC Decision be deleted and replaced with the following:
This redetermination of the patentability of these two applications should be carried out on an expedited basis, in light of the most current version of the MOPOP with the benefit of these reasons.
The full decision can be read here.