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Strike Two: CIPO’s Problem Has a Solution

The Canadian Intellectual Property Office has taken another hit in Benjamin Moore in which two decisions of the Commissioner of Patents rejecting claims to computer-implemented inventions were successfully appealed. Benjamin Moore holds the line on a path set in 2020 when the Federal Court ruled that CIPO’s “problem-solution” approach to claim construction was the wrong legal test in Choueifaty v. Canada, 2020 FC 837.

In Benjamin Moore, the Federal Court addressed the Commissioner of Patents’ rejection of claims to computer-implemented inventions in Patent Application Nos. 2,695,130 and 2,695,146 as unpatentable “mere scientific principles or abstract theorems” under s. 2 and s. 27(8) of the Patent Act. The Court found the Commissioner erred in applying the wrong legal test for claim construction and patentable subject matter.

The Commissioner’s claim construction analysis incorrectly adopted the CIPO’s guidance in former s. 13.05 of its 2015 Manual of Patent Office Practice which set out steps to “identify the problem addressed” and “identify the elements of the claim that are essential to solve the identified problem”. However, the Court had already found the CIPO’s problem-solution approach to claim construction incorrect in Choueifaty. The Court further found the Commissioner erred in parsing out the novel aspects of the invention to conclude they are unpatentable “mere scientific principles or abstract theorems”, noting “that is not the test dictated by the Supreme Court of Canada to determine whether an element is essential or not to an invention”.

The Court endorsed the framework for assessing patentability of computer-implemented inventions proposed by the intervener, the Intellectual Property Institute of Canada, as consistent with the leading decisions Free World Trust, Shell Oil and It directs an examiner to:

  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; and
  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 remarked that the foregoing test “ensures consistency i) between the law applied to patent applications by CIPO and the law applied to issued patents by the Courts; and ii) between the way patent law is applied to computer-implemented inventions and the way patent law is applied to all other types of inventions”.

The 130 and 146 Applications were remitted to the CIPO for new determinations under instructions to follow the proper legal test as reproduced above.

The decision can be found here.