Canadian Federal Court of Appeal on subject matter eligibility: Try, try again

12 minute read
10 August 2023

Last summer, the Federal Court proposed a new framework when considering an appeal that arose from the Canadian Intellectual Property Office (CIPO)'s rejection of two Canadian patent applications for being directed at ineligible subject matter.

However, the Federal Court of Appeal (FCA) has in turn rejected the proposed framework.

Let's explore what happened.

Generally speaking, the claims at issue were directed at computer-implemented methods for colour selection that involved displaying a selected colour or a colour score on a display. In that case, Benjamin Moore & Co. v. Canada (Attorney General), the Federal Court proposed a three-step framework (the Benjamin Moore framework) for assessing the eligibility of computer-implemented (and other) inventions:

  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.[1]

On appeal, the FCA noted that the case "raised challenging questions in an area fraught with complexities"[2] and that "patentability is a highly fact specific exercise."[3]

The FCA accordingly rejected the Benjamin Moore framework and returned the case to CIPO for redetermination on eligibility on an expedited basis guided by the most recent version of the Manual of Patent Office Practice and the FCA's reasoning in the appellate decision.[4]

Is ingenuity potentially relevant for eligibility?

The FCA found that step c. of the Benjamin Moore Framework suggests that novelty and obviousness of an invention are to be considered only when expressly assessing patentability criteria such as novelty, obviousness, and utility after determining that an invention is patentable subject matter.[5]

Instead, the FCA considered it possible that novelty and ingenuity are relevant considerations in determining whether an invention falls within the statutory definition of "invention" when assessing eligibility under section 2 of the Patent Act, which refers to a "new and useful art".[6] The FCA clarified its statements in one of its earlier decisions, v. Commissioner of Patents, regarding identification of the "actual invention" being relevant in assessing patentable subject matter, noting that does not preclude CIPO from considering novelty or ingenuity when assessing subject matter eligibility under section 2.[7]

The FCA discussed previous Canadian cases that indicate that novelty or ingenuity may well be relevant in applying the statutory definition of "invention" found at section 2 of the Patent Act and observed that our courts have yet to deal expressly with the extent to which the consideration of novelty and ingenuity when assessing eligibility under section 2 of the Patent Act differs from the novelty and obviousness exercises mandated by sections 28.2 and 28.3 of the Patent Act.[8]

Given the lack of Canadian authority on this point, the FCA openly asked "why so many courts in common law jurisdictions including the United States and Australia appear to look at the actual contribution to human wisdom or knowledge" when assessing eligibility.[9] In particular, the FCA highlighted the 3-3 split decision in the Australian case of Aristocrat Technologies Australia Pty Ltd v. Commission of Patents and the complicated discussion of the same topic in the U.S. Manual of Patent Examining Procedure (MPEP) in its discussion of the complexity of this question, finding that it could not at this stage conclude that novelty and ingenuity were irrelevant in assessing eligibility.[10]

The problem-solution approach has a limited role.

Regarding claims construction, the FCA confirmed that CIPO erred in restrictively applying a European-style "problem-solution" approach to purposive construction to determine claim scope.

However, the FCA held that CIPO's error was not that the problem and its solution had been considered in assessing the scope of the claims based on reading the application as a whole, but rather that the essential elements of the claims had been identified solely on that basis.[11] The FCA criticized the Federal Court in the present case for not providing any clarification to the purposive construction exercise, noting that the Benjamin Moore framework simply states that purposive construction must be performed, which was never disputed.[12]

The FCA's comments may help guide CIPO's current practice for determining patentable subject matter. CIPO's current patentable subject matter practice notice requires "the subject-matter defined by a claim must be limited to or narrower than an actual invention that either has physical existence or manifests a discernible physical effect or change and that relates to the manual or productive arts, meaning those arts involving or concerned with applied and industrial sciences as distinguished in particular from the fine arts or works of art that are inventive only in an artistic or aesthetic sense".[13]

The FCA's comments clarify that determination of an "actual invention" under this practice should not be limited only to novel and inventive subject matter that is narrowly required to solve a particular problem analogous to a European-style problem and solution approach. Rather, Canadian claim scope must be determined based on a purposive construction carried out in accordance with longstanding Canadian case law, which is not so restrictive.

Keeping an open mind.

The FCA commented that CIPO should keep an open mind and not hastily conclude that the subject matter claimed is not patentable simply because it involves the use of conventional computer technology, while cautioning that "particular difficulties arise from the realization of potentially unpatentable subject matter by programming it into a computer by means of a formula or algorithm (abstract ideas)."[14]

Namely, if an underlying method were novel and that method were implemented on to a conventional computer system, the method may very well be subject matter eligible. In contrast, if an underlying method lacked novelty and the only new knowledge represented by the purported invention was implementing the method on to conventional computer equipment, the purported invention likely would not be patent eligible.[15]

(The FCA did not explain, however, why the same result would not be achieved under an analytical framework in which novelty and inventiveness would be considered separately from eligibility if eligibility were presumed by virtue of the purported invention being implemented practically in a computer.)

Understanding the FCA's decision.

If nothing else, the FCA's decision is a reminder that determining subject matter eligibility for computer-implemented inventions can be difficult not only in Canada, but also in other jurisdictions such as Australia and the United States.

Despite eliminating the Benjamin Moore framework, the FCA's decision is not all bad news for patent applicants: the FCA reminds us that the problem-solution approach should not be exclusively applied in a restrictive manner to assess eligibility, and reinforces the guiding principle that inventions embodying human novelty and ingenuity are protectable under the Patent Act even though the underlying analytical framework for this can in certain circumstances be difficult to apply.

The FCA comments that "it is impossible to attempt to define the full spectrum of particular circumstances that may exist depending on the nature of a particular invention implemented by computer", in part because "technology is becoming more and more complex with quantum technology and the advent of artificial intelligence."[16]

In view of this frank acknowledgement by the FCA and the decade plus of back and forth that the Canadian courts, CIPO, and patent applicants have engaged in on eligibility, it may well be time for Parliament to take up this issue and legislatively clarify an eligibility framework suited to the economic and technological demands of the 21st century.

[1] Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923 at p. 16; our commentary here.
[2] Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168 ("Appeal") at para. 97.
[3] Ibid. at para. 86.
[4] Ibid. at para. 98. CIPO will presumably attempt to re-apply its most recent guidance, found here, in view of the FCA's reasons in the Appeal.
[5] Ibid. at paras. 56-78.
[6] Ibid. at para. 65.
[7] v. Canada (Attorney General) (""), 2011 FCA 328 at para. 42.
[8]Appeal at para. 60.
[9] Ibid. at para 75.
[10] Ibid. at para. 73, 74, 77, 78.
[11] Ibid. at paras. 39, 44.
[12] Ibid. at para. 39, 45.
[13] Practice Notice PN-2020-1 "Patentable Subject-Matter under the Patent Act".
[14] Appeal at para. 85.
[15] Ibid. at paras. 91-94.
[16] Ibid. at para. 86.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.