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Over Attorney General’s Protests, Federal Court Intervenes In The Canadian Intellectual Property Office – Patent


The Canadian Intellectual Property Office (CIPO)1
rejected two of Benjamin Moore’s patent applications relating
to computer-implemented colour selection methods for lack of
subject matter.2 Benjamin Moore appealed to the Federal
Court. After receiving leave to intervene in the appeal, the
Intellectual Property Institute of Canada (IPIC) asked the Court to
instruct CIPO to follow a framework3 (the IPIC
Framework) when assessing patentable subject matter to address what
IPIC called “CIPO’s continued misapplication of the
law,”4. Finding that the IPIC Framework was in
keeping with the jurisprudence,5 the Federal Court
remitted the patent applications back to CIPO for a new
determination with instructions to follow the IPIC Framework.

This decision is important to Canadian patent law. More
generally, it is noteworthy that the Federal Court has ordered a
government agency to follow a framework proposed by a professional
association.

Representing CIPO, the Attorney General had argued that i) the
imposition of the IPIC Framework by the Court would encroach on the
separation of powers and the intent of Parliament,6 ii)
it was not the role of the Court to choose the interpretation of
the Patent Act to be applied by CIPO7, and iii) the IPIC
Framework drew “bright lines that do not exist around the
complex jurisprudence discussing patentable subject matter and
computer-implemented inventions.”8 The Attorney
General also argued that, as a threshold matter, CIPO had not yet
had an opportunity to consider the claims at issue in Benjamin
Moore
in view of the most recent jurisprudence, as the claims
had been rejected under a CIPO practice notice that was
subsequently rejected by the courts.9

The Court is not clear on why it imposed the IPIC Framework on
CIPO despite the Attorney General’s protests. Given that the
Commissioner had not had an opportunity to consider the
applications in view of the latest jurisprudence (and given that
all parties agreed that the Commissioner erred in her initial
analysis), the Court could have simply remitted the matter for a
new determination without instructing CIPO on how to make this
determination. It was to avoid this outcome that IPIC
intervened.

In the last two decades, CIPO has issued successive practice
notices and updates to the Manual of Patent Office Practice (MOPOP)
articulating how examiners should assess subject matter
patentability. All these practice notices share the approach of
permitting examiners to disregard some elements of claimed
inventions when assessing patentable subject matter despite the
clear intention of inventors that these elements are essential (and
are thus essential to the claims under Canadian
jurisprudence10). Examiners can thus reject claims for
lack of subject matter by disregarding computer elements of the
claims. This approach was and still is often used to reject
computer-implemented inventions. Courts rejected this approach,
first in 201111 and again in 202012 as
inconsistent with Canadian jurisprudence.

CIPO issued its latest guidance (the 2020 Practice Notice) for
patentable subject matter following the Chouiefaty
decision in 2020.13 However, the 2020 Practice Notice
again permits examiners to disregard certain elements of claimed
inventions despite these elements being essential under Canadian
jurisprudence (and despite court guidance that such an approach is
incorrect). Unfortunately, the Court in Benjamin Moore
declined to consider the 2020 Practice Notice and CIPO’s
post-Chouiefaty practice, in part because CIPO had
rejected the two applications prior to Chouiefaty under an
earlier practice notice.14

The IPIC Framework may be a welcome relief for patent applicants
in computer-related fields. But given CIPO’s history of
repeatedly writing and following its own rules “despite the
lip service it pays to purposive construction and the
jurisprudence,”15 this relief may be short-lived.
Since the Court did not consider the 2020 Practice Notice, CIPO may
take the position that it is consistent with the IPIC Framework and
continue to apply the 2020 Practice Notice. And, if appealed, the
decision may be overturned. The Federal Court of Appeal might, for
example, agree with the Attorney General that the case was not yet
ripe for review,16 or might take the view that the
Federal Court was incorrect to adopt the IPIC Framework as the
definitive test for patentable subject matter. The longstanding
struggle over patentable subject matter between would-be patentees
and CIPO seems likely to continue.

Footnotes

1. We use “CIPO” to refer to the Commissioner
of Patents, patent examiners and the Patent Appeal
Board.

2. Benjamin Moore & Co. v. Attorney General Of
Canada
, 2022 FC 923 [Benjamin Moore].

3. The framework is as follows:

a) Purposively construe the claim [infra note
10];

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.

4. Benjamin Moore at para 44.

5. Supra note 2 at para 52, citations
omitted.

6. Attorney General’s Memorandum of Fact and Law at
para. 23.

7. Ibid at para. 27.

8. Ibid at para. 53.

9. Ibid at para. 26.

10. Questions of patentability depend on a proper
assessment of the claimed subject matter. The correct approach to
claim construction was defined by the Supreme Court of Canada in
two landmark decisions issued in 2000. Free World Trust v
E?lectro Sante? Inc
, 2000 SCC 66 [Free World Trust]
and Whirlpool Corp v Camco Inc, 2000 SCC 67
[Whirlpool]. The principles of “purposive
construction” outlined in these cases require, among other
things, a determination of the “essential elements” of
the claim – that is, elements are considered essential if it
would be obvious to the skilled person that the element could not
be varied or omitted without affecting the way the invention works,
or if the inventor clearly intended the element to be essential.
Free World Trust specifically rejected notions of the
“spirit” or “substance” of the invention that
were then in use by CIPO when assessing patentability.

11. Canada (Attorney General) v
Amazon.com, Inc,
2011 FCA 328 [Amazon]. After
Free World Trust and Whirlpool, CIPO directed
Examiners to search for the “actual invention” described
in the application to determine whether the subject matter fell
within the statutory definition of “invention” –
independent of the subject matter defined by the claims.
Amazon rejected this approach, affirming that Free
World Trust
and Whirlpool must be followed by CIPO
when identifying the invention (Ibid, at para 43). Despite
this, subsequent Examiner training materials directed Examiners not
to strictly follow Free World Trust (see our article
here).

12. Yves Choueifaty v Attorney General of
Canada
, 2020 FC 837 [Choueifaty]. (see our article
here). The Court in Choueifaty pointed out that “the
job of the Commissioner, like a judge at trial, is to determine
validity” (ibid, at para 36), reaffirming that
Examiners must apply the principles set out in Free World
Trust
when determining whether a claim element is
essential.

13. The 2020 Practice Notice, is entitled
“Patentable Subject-Matter under the Patent Act
(see our articles here and here). Although the Practice Notice
specifically states that “the identification of the actual
invention must be grounded in a purposive construction of the
claim”, it goes on to state that the “actual
invention
may consist of either a single element that
provides a solution to a problem or of a
combination of elements that cooperate together to
provide a solution to a problem“,
and further that an element “that is identified as essential
for establishing the fences of the monopoly under purposive
construction is not necessarily part of the actual
invention
“. [emphasis added]

14. Since the Court was considering what instructions
should be provided to CIPO when remitting the matter to CIPO, it
was arguably open to the Court to consider the 2020 Practice
Notice; as the Court notes, the 2020 Practice Notice “sets out
the approach to be followed by CIPO’s examiners”.
Benjamin Moore at para 48.

15. Ibid at para 31.

16. That is, Court of Appeal may find that by imposing
the IPIC Framework without allowing CIPO to first consider the
applications at issue in view of the most recent jurisprudence and
the 2020 Practice Notice, the Court merely assumed (without
adequately justifying this assumption) that without such
constraint, CIPO would continue to misapply the law. See the
Attorney General’s Memorandum of Fact and Law at para. 25.
“Neither the Appellant, nor the Intervener can argue with
certainty that the Commissioner will misapply the law of purposive
construction or patentable subject matter on a reconsideration of
the 130 and 146 Applications. They can only
speculate.”

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.



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