Comment: Attorney General of Canada v. Benjamin Moore & Co

By Brian W Gray briangray@briangraylaw.com

The Federal Court of Appeal issued an important decision on computer implemented inventions on July 26, 2023. Attorney General of Canada v. Benjamin Moore & Co [1]. Surprisingly this was the first decision of the Federal Court of Appeal on this issue since Amazon.com v. Canada (Attorney Genera)l[2]almost twelve years ago. While the Court did not comment directly on the current post-Choueifaty Canadian Patent Office Practice Notice[3], I suggest that the decision is consistent with this current Practice Notice so that perhaps few changes to it will be required.

Like Amazon, the case contains much nuanced reasoning and is, perhaps intentionally, more suggestive than decisive on the future course of applications containing computer implemented inventions. Because all Parties had concluded that the pre-Choueifaty test was in error, there was no decision before the Court concerning the current Practice Notice and no application of that current Practice Notice to the claims of the Benjamin Moore patent applications. The Court was clearly troubled about formulating its own test in these circumstances.

The Test

Nevertheless, the Court clearly rejected the test ( here the IPIC Test or simply the Test) that had been proposed by the Intellectual Property Institute of Canada (IPIC). The IPIC Test would have instructed the Commissioner to examine computer implemented inventions in the following way:

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.

Part (a) of the Test did not purport to advise how to purposively construe a claim in respect of computer implemented inventions and the Court noted that the Test did not provide any clarification of the purposive construction exercise.[4] However the Court did make its own comments about purposive construction in the context of computer implement inventions as will be discussed below.

Part (b) of the Test had been based in part on the statutory prohibition contained in section 28(3)[5] which reads “ No patent shall be granted for any mere scientific principle or abstract theorem”.

However in reviewing the rest of the Test, the Court concluded that parts (b) and (c) were in error in at least two ways:

1. That patentability elements (novelty, obviousness, etc) in the Test need not be considered in any particular order, which was contrary to the holding in Amazon (para 38)[6]., and

2. That the Test did not begin with an identification of the category of invention or whether the claimed subject matter was an invention as defined in section 2 of the Act.[7]

Further the Court objected to the statutory interpretation of section 27(8) which was implicitly contained in part (b) of the Test. The Court objected to the Test for creating a dichotomy between a scientific principle and new knowledge that is practically applied.[8] The Court held that the addition of the word “only” and “or whether” in the Test implied an interpretation of subsection 27(8) that is not based on any authority which had definitely interpreted subsection 27(8).[9]

Problem-solution approach

The Court did address purposive construction in the context of whether the problem solution approach previously used by the Commissioner was contrary to the general principles of purposive construction.[10] The Court clarified that the error of the Commissioner in Choueifaty[11] was not that she considered the problem and solution as part of her general assessment of the scope of the claims but rather that she had identified the essential elements of the claims solely on that basis.[12] The Court pointed out that identifying the problem to which the claim is addressed and its solution is relevant when construing the claims but it cannot be the sole or overarching element in the determination of the essential elements[13]. The Court noted that the identification of the “actual invention” in the context of purposive construction is a difficult exercise.[14]

Purposive construction

The Federal Trial Court had criticized the Commissioner’s examination of the Benjamin Moore case because it had conducted a novelty analysis (i.e. considering the novel aspects of the invention claimed) while determining the essential elements of the claims, allegedly contrary to Free World Trust and Whirlpool[15]. The Federal Court of Appeal considered the Trial Court’s finding an error because this was an “important question, which has been the subject of much controversy in the United States and Australia” and which “has never been addressed in Canadian law.”[16]

In reviewing Shell Oil [17]. and Progressive Games[18] the Court found that the respective courts looked at “novelty and ingenuity as relevant considerations in determining whether the addition to human knowledge fell within the statutory definition of “invention’ at section 2”[19]. The Court accepted that the definition of invention reflected concepts such as “new and useful” found in other specific statutory provisions of the Patent Act.[20] In assessing patentable subject matter the Court endorsed the Court’s conclusion in Schlumberger[21] that “in order to determine whether the application discloses a patentable invention, it is first necessary to determine what, according to the application has been discovered.”[22] The Court noted that in Amazon the Federal Court of Appeal had referred to the “novel aspect of the claimed invention” and the “inventive aspect” of the claimed invention.[23]

The Court found that Amazon did not settle the issue of whether, once the claims have been purposively construed, the Commissioner may consider the concepts of novelty and ingenuity in assessing patentable subject matter under section 2. However, Amazon did not preclude such an exercise.[24] The Court noted that Canadian courts have yet to consider how the concepts of new and useful in the context of section 2 differs from the exercises mandated by sections 28.2 and 28.3 (novelty and non-obviousness).[25]

Aristocrat and the use of common law exceptions inherent in the definition of invention

Importantly the Court noted that the kind of practical application that was required to meet the definition of invention under section 2 cannot be based on a construction of subsection 27(8) but must consider the meaning of “invention” as a whole including recognized judicial exclusions.[26] The Court reviewed some of the recognized judicial exclusions, such as claims directed to professional skills, and referred generally to other judicial exclusions as enumerated in Monsanto Canada Inc. v, Schmieser[27]. The Court also observed that there are other similar exclusions which have been found to be relevant to computer implemented inventions in other common law jurisdictions, such as the U.S. and Australia and which have yet to be considered by Canadian courts.

The Court then went on to consider the decision of the High Court of Australia in Aristocrat Technologies[28] It noted that their approach to subject matter patentability remains rooted in the traditional principles of patent law as developed through the common law methodology. [29] The Court noted that both sides in the Aristocrat case accepted that the claimed subject matter had to meet a “low threshold of novelty and inventiveness” in order to qualify as an invention within the statutory definition in Australia and that this was a distinct exercise from the one mandated by other sections of the Patent Act dealing with novelty and obviousness. The Court observed that other common law jurisdictions looked at the actual contribution to human wisdom or knowledge in deciding subject matter eligibility. The Court suggested that Australian and English law on this point was worthy of consideration.[30]

The actual invention

Viewed as a whole it would appear that the Court is in favour of looking at what was actually invented or what was the contribution to human ingenuity when considering whether the claimed subject matter qualifies as an invention under section 2, and this would seem to include determining whether an element, even if deemed essential under purposive construction, actually contributed to the claimed invention. [31]

However, the Court noted that difficulties arising from the realization of potentially unpatentable subject matter by programming it into a computer but advised that the Commissioner 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.[32]

What is clear however is that determining that a computer is essential to the operation does not make the claimed subject matter patentable if the element does not add anything to human wisdom on the subject or merely transforms information into a language that could be read by a computer. [33] It is necessary to determine where the discovery lies, i.e., what new knowledge has been added to human wisdom.[34]

If the only new knowledge lies in the method itself, it is the method that must be patentable . If, however, the new knowledge is simply the use of a well-known instrument (a book or a computer) to implement this method, then it will likely not fall under the definition found at section 2 without something more to meet the requirement described at paragraph 66 of Amazon.[35] The Court simply reiterated the requirement of physical existence or manifestation of a discernable effect or change by referring to Amazon, without further explanation. However. viewed in context, it would seem that “discernable effect or change“ must include subject matter that adds something that contributes to human wisdom or human ingenuity.

Conclusion

There is much to chew on in this case. The Court is grappling with the concepts of essentiality and purposive construction in the context of computer implemented inventions. Free World Trust and Whirlpool cannot be taken to mean that the Court cannot ask what the actual invention is, or, in the words of the Court, what is the contribution to human ingenuity. The Court noted that the identification of the “actual invention” in the context of purposive construction is a difficult exercise.[36] While purposive construction may decide that an element is essential, the Court has concluded that this may not be determinative if this essential element (for instance the computer) does not contribute to what makes the claimed element “ingenious” or contributing to “human wisdom”. The other elements must stand on their own to support patentable subject matter. The problem solution approach can be some help, but as the Court notes, it cannot be the overarching principle.

The post-Choueifaty Patent Office Practice Notice of 2020-11-03[37] was before the Trial Court but was not commented on because it was not the Practice Notice in force at the time of the rejection of the Benjamin Moore patent applications. [38] The Appeal Court also did not directly comment on this Notice. However, reading the Court’s decision as a whole it would seem that there is little in the current post-Choueifaty Practice Notice that is inconsistent with the Appeal Court’s decision. Possibly the Patent Office will need few, if any, changes to its existing practice as a result of the decision of the Court of Appeal in this case. Hopefully we will not have to wait another 12 years to have further guidance from the Court concerning computer implemented inventions.

 

[1] Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168. Hereinafter Benjamin Moore FCA. (all paragraph numbers not otherwise identified are to this decision) . The Trial Decision is at Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, otherwise identified herein as Benjamin Moore FCTD.

[2] Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328

[3] Patentable Subject Matter under the Patent Act, CIPO practice notice 2020-11-03 and see Choueifaty v. Canada (Attorney General) 2020 FC 837

[4] Para 45

[5] Patent Act R.S.C. 1985 c. P-4 (formerly section 27(8)

[6] Para 48 FCA; para 38 Amazon, op cit footnote 2.

[7] Para 49

[8] Para 47

[9] Para 54

[10] Para 39-

[11] Choueifaty v. Canada (Attorney General) 2020 FC 837

[12] ibid

[13] Para 41

[14] Para 42

[15] Para 6 Benjamin Moore FCA, para 36 Benjamin Moore FCTD; Free Word Trust v. Electro Sante Inc. 2000 SCC 66; Whirlpool Corp. Camco Inc. 2000 SCC 67

[16] Para 56

[17] Shell OIL Co. v Commissioner of Patents [1982] 2.S.C.R.

[18] Progressive Games Inc. v. Canada (Commissioner of Patents) 2000 CanLII 16577 (F.C.A.)

[19] Para 65

[20] Para 67

[21] Sclumberger Canada Ltd. V. Commissioner of Patents [1982] 1 F.C. 845

[22] Para 68

[23] Para 69

[24] Para 70

[25] Para 72

[26] Para 53,para 55

[27] 2004 SCC 34

[28] Aristocrat Technologies Australia Pty Ltd v. Commissioner of Patents [2022] HCA 29.

[29] Para 73.

[30] Para 76

[31] Para 75,78,87

[32] Para 85

[33] Para 87

[34] Para 89

[35] Para 91

[36] Para 42

[37] Patentable Subject Matter under the Patent Act, CIPO practice notice 2020-11-03

[38] Para 50 Benjamin Moore FCTD