New patent test will make process simpler, more friendly to computer-implemented inventions: lawyers

Federal Court adopted test proposed by Intellectual Property Institute in recent ruling

New patent test will make process simpler, more friendly to computer-implemented inventions: lawyers
Matthew Norwood, Artemis Lai

The Federal Court recently endorsed a new test to assess the patentability computer-implemented inventions, which lawyers say will make the patent process simpler and more favourable to applicants.

The Commissioner of Patents had rejected proposed patent claims from paint company Benjamin Moore related to its Colour Selection System. The technology uses scientific research on the emotional responses particular colours elicit in humans, identified patterns, and assigned mathematical values to colours to determine how they would make people feel.

Benjamin Moore built a digital interface to allow customers to select a desired response, the appropriate colours, and other colours that would harmonize. The system could replace the type of work for which they might hire an interior designer, says Matthew Norwood, a lawyer, patent agent and partner at Ridout & Maybee LLP who represented Benjamin Moore.

But a Canadian Intellectual Patent Office (CIPO) patent examiner found the patents did not comprise patentable subject matter. The patent appeal board confirmed the decision and recommended the Commissioner refuse the patents. The Commissioner found that the patents’ essential elements fell under the statutory exception in s. 27(8) of the Patent Act, which states: “no patent shall be granted for any mere scientific principle or abstract theorem.”

Benjamin Moore appealed to the Federal Court and both the paint company and the Attorney General agreed that the CIPO had erred in its assessment of the patents. While Benjamin Moore wanted them declared patentable, the Attorney General argued that they should be remitted back to the CIPO for reconsideration. Benjamin Moore asked the court, alternatively, to send its patents back to the CIPO, but the parties did not agree on the applicable test.

As an intervenor in the case, the Intellectual Property Institute of Canada (IPIC) proposed an evaluative approach to computer-related inventions like Benjamin Moore’s. Associate Chief Justice Jocelyne Gagné adopted the approach and instructed the CIPO to employ it.

The approach includes three steps. Step one: “purposely construe the claim.” Step two: “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 step three: “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.”

The Attorney General has until Sept. 18 to appeal the ruling. Aside from a possible appeal, Norwood says that how the examination division at the CIPO interprets the test is still an open question. But for now, the ruling makes the process for patenting software-based inventions “quite a bit simpler, with a lot fewer moving parts” than has been the case for a while, he says.

“I think reasonable people can disagree about the ultimate treatment for software and computer related inventions under the law – what the law ought to be,” says Norwood. “But I think – I hope – that what this decision results in is more predictability and consistency, which I think everyone can agree is a positive development.”

If the decision stands, it will make it easier for computer-implemented inventions to become patentable in Canada, says Artemis Lai, a lawyer and patent and trademark agent at Smart & Biggar LLP in Vancouver. “It's quite a favourable decision for Canadian applicants which have computer-implemented inventions,” she says.

Historically, the CIPO has been “fairly skeptical” toward software-based inventions, and jurisdictions around the world have placed more stringent patentability tests on them, says Norwood.

Norwood says he is sympathetic with the CIPO’s position because it is under pressure from both sides. There are those who complain that it is too difficult to get patents on innovative software. Canada is a leader in machine learning and digital therapeutics and people argue that “all these startups are going to have their lunch eaten by the big guys if they don’t have patent protection,” he says.

On the other hand, there are many companies who are worried that CIPO will issue low-quality patents, which will be overbroad and vulnerable to abuse. “There's been a history of that, arguably, in certain places,” he says. Norwood adds that guidance from courts has not been straightforward.

For roughly the last decade, the CIPO has used the “problem solution” approach to determine the patentability of a claim, says Lai, who was not involved in the Benjamin Moore case. The problem-solution approach consists of identifying a problem disclosed by the patent application, and then “construing the essential elements of a claim to be those elements which are ‘necessary to achieve a disclosed solution to an identified problem,’” wrote Lai in a 2020 “IP Update.”

“This approach received a lot of negative feedback from the patent bar just based on how much it diverged from Canadian caselaw,” she says.

In 2020 in Choueifaty v Canada (Attorney General), the Federal Court said the problem-solution approach was legally incorrect because it failed to consider the inventor’s intention, says Lai. Choueifaty led to a CIPO practice notice outlining a new “actual invention” approach. While the new approach contained “incremental improvements” more aligned with caselaw, aspects of the problem-solution approach remained. Benjamin Moore is a “fairly direct rebuke of the most recent practice notice,” she says.

In Benjamin Moore, IPIC told the court that, in spite of Choueifaty, the CIPO had continued to use the wrong approach. The CIPO continued to construe claims “from the perspective of the ‘problem to be solved’ and the ‘solution brought by the invention,’” and applied the s. 27(8) exception too broadly.

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