For the third time in a little over a decade, the Canadian Federal Court has disagreed with how the Canadian Intellectual Property Office ("CIPO") determines eligibility of computer-implemented inventions. In contrast to past decisions, though, in Benjamin Moore & Co. v. The Attorney General of Canada and Intellectual Property Institute of Canada ("Benjamin Moore") the Court has expressly set forth a new test for CIPO to apply when assessing eligibility. The test requires CIPO to determine whether a construed claim "as a whole consists of only a mere scientific principle or abstract theorem" or, rather, comprises a "practical application that employs a scientific principle or abstract theorem." If the construed claim comprises a practical application, then in the context of a computer-implemented invention the claim should be eligible.
Benjamin Moore is an appeal from rejections by CIPO of Canadian patent application nos. 2,695,146 and 2,695,130 for being directed at ineligible subject matter. Generally speaking, the claims at issue were directed at computer-implemented methods for color selection that involved displaying the selected colour and/or a colour score on a display. CIPO had rejected the applications by applying the problem-solution approach it adopted after Amazon.com in 2011. Since those rejections, CIPO had adopted new guidance that purportedly did away with the problem-solution approach in response to Choueifaty in 2020. Consequently, CIPO acknowledged to the Court that while its rejections of Benjamin Moore's applications under its problem-solution approach were incorrect, that the proper remedy was for the Court to remit the applications back to CIPO for assessment under CIPO's updated, post-Choueifaty, eligibility guidance that purportedly did away with problem-solution.
Perhaps influenced by the arguments that even under CIPO 's post-Choueifaty eligibility guidance that CIPO "regularly misconstrues the patentability of computer-implemented inventions, incorrectly excluding them" and that "CIPO's continued misapplication of the law […] warrants the Court's intervention," the Court decided to remit the applications back to CIPO while also expressly setting forth a new eligibility test for CIPO to use. Namely, the Court adopted the eligibility test proposed by the Intellectual Property Institute of Canada (which intervened in the case), by saying the examiner should, when determining eligibility of a claim:
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 whether it comprises a practical application that employs a scientific principle or abstract theorem; and
c) 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.
In mandating this test, the Court commented that it was a proper response to the Federal Court of Appeal's comments in Amazon.com to adapt "our understanding of the nature of the 'physicality requirement'" for inventions as technology continues to advance in the information age. The Court also commented that it "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." This latter remark presumably refers to the mention of "statutory categories and judicial exclusions" in part c) of the test, which would capture exclusions such as prohibitions on patenting methods of medical treatment and higher life forms that make this new test generally applicable to all technologies.
Benjamin Moore should be welcomed by patent applicants as setting forth an eligibility test consistent with Canadian jurisprudence that reflects the reality that the patent system needs to adapt in order to protect, and promote investment in, computer-related innovation. While only time will tell how CIPO will apply Benjamin Moore, the requirement that it is the "construed claim as a whole" that needs to be assessed to determine whether it comprises a practical application of a scientific principle or abstract theorem would seem to prohibit in at least some cases CIPO's current practice of occasionally reading out computer equipment from a claim when concluding a claim is directed only at an abstract idea and therefore ineligible. Practically speaking, this test may also make Canadian law on eligibility more familiar to US patent applicants who are accustomed to the United States Patent and Trademark Office's practice of determining whether a claim integrates a judicial exception into a practical application when assessing eligibility. Benjamin Moore shows that Canadian courts aren't shy about ensuring CIPO applies the law on eligibility correctly, which should provide comfort and encouragement to those seeking to patent computer-implemented inventions in Canada.
Representative claim of Canadian patent application no. 2,695,146:
1. A computer-implemented colour selection method, comprising:
Selecting, using a controller, a group of known colours from a storage;
Receiving user input from a user input device, through a visual user interface of a color display screen, identifying a user chosen color;
Receiving user input from the user input device identifying a threshold for a first color emotion based on a first human psychophysical perception, wherein the threshold comprises a numerical color emotion score and wherein the first color emotion comprises at least one of exciting-calming, light-dark, clean-dirty, happy-sad, fun-serious, warm-cool, or inviting-uninviting color emotion;
Selecting, using the controller, in dependence on a first mathematical model that models the first human psychophysical perception, which colors in said group of known colors would achieve the threshold for the first color emotion when combined with the user chosen color and with each other,
Wherein the first color emotion comprises a bi-polar emotion scale having a plurality of levels between end points and wherein the first mathematical model is based on psychophysical responses of a plurality of test subjects to a plurality of test colors indicating a degree of color emotion on the bi-polar emotion scale for the plurality of test colors; and
Providing an output for the user identifying the selected colors on the visual user interface by at least displaying on the color display screen a color sample of each of the selected colors, displayed concurrently on the color display screen.
Representative claim of Canadian patent application no. 2,695,130:
1. A computer-implemented method for selecting colors comprising:
Associating, using a controller, in dependence on a mathematical equation derived from measuring psychophysical responses of a plurality of test subjects to a first plurality of test colors, a color score with each of a second plurality of colors that are numerically defined in a color library stored in a storage;
Receiving user input from a user input device, through a visual user interface of a color display screen, selecting at least three colors from the color library;
Displaying on the visual user interface of the color display screen a color sample of each of the at least three selected colors in a relative positioning of the selected colors on the color display screen, displayed concurrently on the color display screen;
Displaying on the visual user interface a combined color score for said color combination;
Wherein the combined color score is calculated using the controller as follows:
(a) Calculating for each unique pair of the color combination that are adjacent to each other an adjacent pair color score using a first equation in dependence on the color score of each color in the adjacent pair;
(b) Calculating for each unique pair of the color combination that are non-adjacent to each other a non-adjacent pair color score using a second equation in dependence of the color score of each color in the non-adjacent pair;
(c) Wherein the combined color score = 1/n • (∑adjacent pair color score(s) + ∑non-adjacent pair color score(s)), where n is the total number of unique adjacent and non-adjacent pairs in the color combination.
 Representative claims from both applications are at the bottom of this article.
 Benjamin Moore at para. 6.
 Ibid. at paras. 43 and 52.