Canada's Federal Court orders the Patent Office to construe claims purposively before judging computer-implemented eligibility

2022-06-17Canada

Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923 (June 17, 2022) (Gagné A.C.J.), Court Files T-1340-20 and T-1341-20, Intellectual Property Institute of Canada intervening, allowing appeals from the Commissioner of Patents' refusals of Canadian Patent Application Nos. 2,695,130 and 2,695,146

Canadian Patent Application Nos. 2,695,130 and 2,695,146 claim Benjamin Moore's "Color Selection System," described as "a computer-implemented colour selection method that uses experimentally derived relationships for colour harmony and colour emotion." The Commissioner of Patents refused both on the ground that the claims were not an invention under section 2 of the Patent Act, finding their essential elements to be "a mere abstract theorem" excluded by subsection 27(8), and reached that result by applying the problem-solution approach even after stating that purposive construction applied. On appeal the Attorney General conceded the error but asked the Court only to remit the applications for reconsideration in light of Choueifaty v. Canada (Attorney General), 2020 FC 837, which had already rejected the problem-solution approach; the intervener, the Intellectual Property Institute of Canada, told the Court that despite Choueifaty "CIPO continues to use the wrong approach." Associate Chief Justice Gagné allowed both appeals, remitted the applications, and directed the Commissioner to (a) "Purposively construe the claim," (b) ask whether the construed claim as a whole consists of "only a mere scientific principle or abstract theorem" or "comprises a practical application that employs a scientific principle or abstract theorem," and (c) if it comprises a practical application, assess the construed claim for the remaining patentability criteria, namely statutory categories and judicial exclusions, novelty, obviousness and utility. No costs were awarded.

What it changesCanadian examination of software and machine learning claims now turns on what the purposively construed claim requires as a whole, with the computer counted as an essential element where the claim makes it one, rather than on an examiner's reformulation of the problem with the computer stripped out as a non-essential detail. For an applicant filing in Canada from a United States-drafted machine learning application, the drafting consequence is that the computer elements must be essential on the face of the claim: recite the model, the training data flow and the system in which the method runs as positive limitations, and explain in the specification why those elements are not optional. Pending Canadian applications refused under the problem-solution approach should be re-argued under this three-step test, on the practical application in the construed claim rather than the novelty of the algorithm. The Attorney General opposed the Court prescribing a specific test, so an appeal to the Federal Court of Appeal is possible; the directions bind the Commissioner today.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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