Canadian Federal Court Sets a New Subject-Matter Eligibility Test for Computer-Implemented Inventions

“The new take a look at is expected to provide clarity to topic-subject determination of computer system-applied innovations in Canada.”

computer-implemented inventions - the air on labyrinthine subject matter-make a difference eligibility standards for pc-implemented innovations (CIIs), a Canadian Federal Court docket final thirty day period revisited the problem in Benjamin Moore & Co. v. Attorney Common of Canada, 2022 FC 923. In its selection, the courtroom, while environment a new test, rejected, for the 2nd time, a issue-option solution to claim design adopted by the Canadian Intellectual House Office environment (CIPO) in inspecting patent programs.

The attractiveness was filed versus selections by the Canadian Commissioner of Patents finding two Canadian Patent Applicants numbered 2,695,130 and 2,695,146 as patent ineligible under sections 2 and 27(8) of the Canadian Patent Act. Intellectual Residence Institute of Canada (“IPIC”), an IP coverage advocacy firm, intervened in the charm proceedings, affirming that the enchantment raised a elementary query of Canadian Patent Regulation.

Examination Assistance for Computer system-Executed Innovations

Portion 2 defines “invention” to consist of “any new and beneficial artwork, system, machine, manufacture or composition of subject.” Subsection 27(8), however, bars patent grant for a “mere scientific basic principle or abstract theorem.”

In Totally free Entire world Believe in v. Electro Sante Inc, 2000 SCC 66, the Supreme Court docket of Canada clarified that before evaluating subject matter-subject eligibility, vital elements of claims ought to be determined by purposively construing claim aspects. Variables related for purposive building include noting components that have a content effect on the creation and the inventor’s intent.

CIPO later on devised a issue-resolution approach to claim building, wherein only people factors in claims that ended up required to solve the challenge discovered in the patent software ended up regarded essential. Thereafter, subject-matter assessment was executed on important assert aspects.

In 2013, CIPO introduced a Observe Be aware, titled “Examination Exercise Respecting Computer-Executed Inventions,” which indicated that if a laptop or computer ingredient is observed to be an critical factor, the claims would usually be held as statutory. On the other hand, if the critical aspects lack any “physicality”, the statements would be considered non-patentable.

Next a current Federal Court judgment in Choueifaty v. Canada (Attorney General), 2020 FC 837, CIPO launched a new Exercise Note in November 2020, titled “Patentable Topic-Matter below the Patent Act”, which pointed out that in buy to be patent-eligible, the laptop parts should cooperate with other components of the claimed creation, and that real invention should really have actual physical existence or manifest a discernible actual physical effect.

Patent Apps

The subject matter of the existing Enchantment was two patent programs, equally titled “Shade Choice Program”, submitted by Benjamin Moore & Co., a business paint production organization. The assert features involved coloration range methods involving a mathematical equation that modeled human psychological perceptions to coloration, associating a shade emotion score to a variety of hues in a database, and picking out colours primarily based on the user’s input indicating a preferred coloration emotion level. Both programs had been submitted in July 2007 and posted in January 2009.

Rejection Through Prosecution

For the duration of prosecution, equally patent applications were being turned down by Examiners for encompassing non-statutory subject-make a difference, and not complying with area 2.

In the Final Workplace Action issued in May 2017, the Examiner, on purposively construing the promises, noted that pc factors could not be regarded as vital. The vital things, as observed by the Examiner, bundled calculating human psychophysical notion values to color aspects based mostly on mathematical designs, and other components which are considered as mere psychological procedures and patent ineligible. Nonetheless, the Examiner discovered the patent applications to be novel and non-clear.

Claim Construction by the Patent Enchantment Board

The Examiner’s choice was reviewed by a 3-member Patent Charm Board, which provided an oral hearing. All through the proceedings, the Applicant relied on Absolutely free Earth Trust in emphasizing that computer system components brought about materials outcome to the claimed invention and had been hence critical. Additional, the Applicant claimed that the invention solved a technical difficulty in the field of coloration science. Nevertheless, the Applicant conceded that no try was manufactured to remedy a laptop issue when maintaining the essentiality of computer aspects.

The Board, nonetheless, concluded that identifying a mathematical correlation involving shades and human emotive responses to support color choice was not a specialized challenge for matter-make a difference issues, and personal computer elements were not crucial to the claimed non-technological option. The Board cited a Federal Courtroom keeping in Schlumberger Canada Ltd v Commissioner of Patents 1981, FCA 204, that use of computer systems for conducting mathematical evaluation of data will not render an invention patentable.

General, the Board agreed with the Examiner and famous that the crucial features of the statements ended up directed to mathematical calculations and mental measures. Consequently, the Board rejected both equally applications for currently being patent ineligible.

Present Attraction Just before the Federal Courtroom

The Applicant-Appellant moved to the Federal Court docket towards the Commissioner’s selections. In this article, the Appellant challenged the Commissioner’s claim design methods of “problem-solution” and getting an “actual invention”. The correct solution, Appellant argued, would have been pinpointing assert aspects that have a material outcome on the creation or aspects the inventor meant as necessary. By getting rid of the laptop elements as non-crucial, the Commissioner experienced improperly concluded that the remaining assert components ended up directed to mere mathematical types and calculations. Appellant contended that use of a laptop was critical to promises for functions this kind of as determining adjacency of color pairs, storing the shade library, and exhibiting colour picks. This was substantiated by a co-inventor’s declaration, indicating the inventor’s intent on the essentiality of computer system things. The Appellant also cited Choueifaty, exactly where the court held the trouble-alternative strategy to be incorrect at regulation. Having said that, the Follow Observe of November 2020 continued to abide by the trouble-resolution approach. Also, the Commissioner’s technique of looking at only the novel things in the promises as critical and getting rid of “generic” laptop or computer elements was disputed by the Appellant.

On the Respondent’s aspect, the office of the Legal professional Typical of Canada (AGC) represented the Commissioner. The Respondent at the outset agreed that the Commissioner’s choices ended up incorrect but sought to remit the applications again to the Commissioner for re-determination utilizing a right examination for purposive design. Boasting it to be a subject of administrative law, the Respondent argued that judicial intervention would be premature as the Commissioner did not have the chance to think about the Appellant’s patent apps under the new Observe Recognize of November 2020. This was mainly because Commissioner’s choices had been designed just before the Apply See was issued. The Respondent emphasised that Commissioner is the proper authority owning the skills to execute assert design and assess issue-make any difference eligibility. Different judgments have been cited the place the courts showed deference to the Commissioner on technological aspects of declare development.

On subject-issue eligibility of CIIs, the Respondent contended that an creation should have actual physical existence or manifest a discernible impact. Further, applying a scientific theory or mathematical theorem on a generic laptop or computer would not render the invention as patentable matter subject.

The Intervenor, IPIC, normally aligned with the Appellant’s situation and referred to as CIPO’s solution to assessing issue-matter patentability incorrect. In addition, CIPO’s inclination of broadly construing the “mere summary theorem” exception was highlighted. It was claimed that regardless of lots of judicial choices to the opposite, CIPO continues employing the incorrect trouble-option approach. The Intervenor additional critiqued the dilemma-alternative technique for remaining detrimental to CIIs, which it reported resulted in recurrent rejection of patent applications. Data were introduced that indicated a significant selection of CIIs remaining patented around the globe, compared to an abysmally very low range in Canada. The Intervenor urged a revised framework for subject matter-make a difference examination to proper this craze. Chorus was added to following No cost Earth Have faith in in claim building i.e., noting product influence and inventor’s intent in identifying no matter whether a declare aspect is critical. The Intervenor disputed CIPO’s apply of excluding laptop factors as non-important and alleging the remainder of claim as an abstract concept and for that reason non-patentable. As a result, the Intervenor asked for the court to re-study the “physicality requirement” in topic-make a difference examination of CIIs. The Follow Recognize of November 2020 was also disputed for its inappropriate concession to the problem-resolution approach in spite of the court’s final decision to the opposite in Choueifaty.

Court’s Choice

Recounting a series of preceding conclusions, which include Whirlpool Corp v Camco Inc, 2000 SCC 67, Totally free Earth Trust, and Canada (Attorney Basic) v, 2011 FCA 328 the courtroom held that none of the selections propose a dilemma-answer solution, and instead purposive design ought to be adopted in matter-matter assessment. The court re-affirmed the Choueifaty decision, exactly where the dilemma-remedy approach was discredited, and additional that sensible software of scientific ideas and theorems can constitute patentable inventions.

The Commissioner’s choices have been found in conflict with the Supreme Court’s judgments in Whirlpool and Free of charge World Rely on. Specifically, the trouble-resolution approach, contemplating only novel features of claims in issue-matter assessment, and keeping computer system parts as non-important for not solving a computer dilemma, was held as incorrect.

In developing the appropriate authorized check for figuring out the patentable issue subject, the courtroom approved the framework prompt by the Intervenor, acquiring it compliant with the recent condition of the law. The a few-aspect exam put forward by the Intervenor and recognized by the court docket is as follows:

  1. Purposively construe the declare
  2. Request irrespective of whether the construed claim as a full is composed of only a mere scientific principle or summary theorem, or regardless of whether it includes a realistic application that employs a scientific basic principle or summary theorem and
  3. If the construed claim contains a simple software, evaluate the construed declare for the remaining patentability criteria: statutory categories and judicial exclusions, as effectively as novelty, obviousness, and utility.

The Appellant’s programs have been remitted again to CIPO for a new resolve on patentable matter matter primarily based on the authorized examination set by the court docket.


The new take a look at is expected to convey clarity to topic-make any difference resolve of laptop-carried out innovations. In addition to rejecting the use of the issue-option method in determining important claim components, the courtroom has directed that promises need to be assessed as a total in figuring out no matter if any realistic software is put ahead. Therefore, CIPO’s need that applications involving CIIs must offer enhancements to the working of desktops is no lengthier legitimate. Also, CIPO’s apply of restricting the issue-matter assessment only to novel aspects in claims or its resolve of “actual invention” has been set aside. Even further, a dazzling line in direction of conducting purposive construction in advance of novelty evaluation was re-affirmed.

The choice is subject to attraction.

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