The Federal Court of Canada’s current judgment in Benjamin Moore & Co. v. Canada (AG), 2022 FC 923, ordered Canadian patent examiners to use a brand new authorized framework after they assess computer-implemented innovations for subject-matter patentability. The three-part take a look at was proposed by the Intellectual Property Institute of Canada (IPIC), who intervened in the case. IPIC was represented by a workforce at Fasken composed of Julie Desrosiers, Eliane Ellbogen, and Michael Shortt. It is predicted that this new take a look at will make clear and simplify the evaluation of the patentability of computer-implemented innovations and be certain that they don’t seem to be unfairly denied patentability standing going ahead. Patent candidates and their Canadian brokers ought to take be aware of the new framework.
Background
Benjamin Moore appealed Canadian Intellectual Property Office’s (CIPO) denial of two patent functions for a computer-assisted methodology of selecting paint colors to match moods and feelings. CIPO denied the patent functions on the grounds that they weren’t directed to patentable topic, however quite constituted a mere summary theorem.
CIPO based mostly its denial on (1) the so-called “problem-solution” method to subject-matter patentability, which it makes use of for computer-implemented innovations, and (2) a very broad utility of the “mere scientific precept or summary theorem” exception offered for at s. 27(8) of the Patent Act.
The problem-solution method allowed CIPO to disregard laptop {hardware} parts in claims, in contradiction to the requirement that important declare parts be determined based mostly on purposive development. CIPO justified ignoring these parts on the foundation that they weren’t obligatory to attain the explicit answer that CIPO had deduced from the patent. This was problematic for patent candidates, since as soon as the laptop parts in a declare are eliminated as non-essential below the problem-solution method, CIPO would then allege that the remaining parts outlined an summary concept or mere scientific precept, resulting in the declare as an entire being rejected as non-patentable subject material.
Arguments on Appeal
The enchantment was considerably distinctive in that each one sides agreed that CIPO was in error and that the case needs to be remanded again to CIPO for reconsideration. Associate Chief Justice Gagné of the Federal Court agreed, reiterating that the “problem-solution” method was expressly rejected in Choueifaty v. Canada (AG), 2020 FC 837, the place Justice Zinn had beforehand held that this method was inconsistent with purposive development as set out in Free World Trust.
The actual dispute on enchantment was what steerage, if any, the Federal Court ought to supply to CIPO for that reconsideration.
The Attorney General of Canada argued in opposition to the Federal Court issuing steerage about the method that CIPO ought to comply with if the case have been remanded again to it.
By distinction, IPIC urged the Court to supply express steerage on how CIPO ought to assess subject-matter patentability of computer-implemented innovations. CIPO submitted that such steerage was obligatory in gentle of CIPO’s systematic failure to comply with binding case regulation, which led it to assess computer-implemented innovations by an incorrect authorized framework. Indeed, following Choueifaty, CIPO issued a observe discover aimed toward clarifying the relevant authorized framework in the case of computer-implemented innovations. However, the observe discover continued to instruct patent examiners to make use of the exact same problem-solution method that had simply been rejected by the Federal Court. The solely change was that problem-solution pondering appeared below a barely totally different title at a later stage of the take a look at.
In place of the problematic problem-solution method, IPIC proposed the following three-part take a look at:
Purposively construe the declare;
Ask whether or not the construed declare as an entire consists of solely a mere scientific precept or summary theorem, or whether or not it contains a sensible utility that employs a scientific precept or summary theorem; and
If the construed declare contains a sensible utility, assess the construed declare for the remaining patentability standards: statutory classes and judicial exclusions, in addition to novelty, obviousness, and utility.
Benjamin Moore endorsed this framework in oral argument at the listening to of the enchantment.
The Federal Court adopted IPIC’s take a look at, and directed CIPO to use it throughout the reconsideration of Benjamin Moore’s patents. In adopting IPIC’s take a look at, the Court confirmed that the “physicality requirement” put forth by the Federal Court of Appeal in the 2011 Amazon case is topic to evolution as know-how itself evolves. As IPIC argued, in the case of laptop packages, it’s a synthetic distinction to say that no “discernible impact or change” might end result from a computer-based program, and it’s due to this fact arbitrary to find out that computer-implemented innovations don’t have the obligatory “physicality” to be patentable. The Court agreed that CIPO’s method to computer-implement innovations misconstrues the Federal Court of Appeal’s ruling in Amazon.
Implications for Patenting Computer-implemented Inventions in Canada
In sum, the Court confirmed that IPIC’s proposed framework was in line with the teachings of each the Supreme Court and the Federal Court of Appeal, in addition to ensured consistency in the remedy of patents earlier than CIPO and earlier than the Courts and that computer-implemented innovations acquired the similar remedy throughout patent examination as some other kind of invention. Unless and till this determination is overturned on enchantment, it constitutes the regulation of the land, binding on CIPO patent examiners and patent candidates alike. Indeed, given the Supreme Court’s ruling in R v Sullivan, 2022 SCC 19, it’s now binding on all Federal Court judges confronted with the similar difficulty.
This determination will present much-needed readability in how patent functions for computer-implemented innovations are examined by CIPO. This is very vital as a result of patent functions for computer-implemented innovations have elevated exponentially in the previous twenty years, particularly people who incorporate synthetic intelligence applied sciences.
The Attorney General has till July 18 to file a discover of enchantment if the authorities intends to contest this determination, however an enchantment will not be assured, since none was taken in Choueifaty. In gentle of the Court’s determination, it’s endorsed that patent candidates assessment present or future functions in gentle of the new framework. Applicants can also contemplate reinstating functions that have been beforehand deserted or interesting a refusal of an utility the place CIPO relied on an method that will now be thought of inconsistent with IPIC’s proposed framework.
https://www.fasken.com/en/knowledge/2022/06/federal-court-adopts-ipics-proposed-test-for-the-patentability-of-computer-implemented-inventions
