Canada has adopted a new test formulated by the Intellectual Property Institute of Canada (IPIC) which was proposed before the Federal Court of Canada. The recent judgement in Benjamin Moore & Co v. Canada (AG) has asked the Canadian patent examiners to apply the new proposed framework in the assessment of computer implemented inventions for patentability of subject matter.
The new three-part test is expected to clarify and simplify the assessing of patentability of computer-implemented inventions and will also ensure there is no unfair denial of patentability status.
It began when Benjamin Moore appealed against the denial of two of his patent applications by the Canadian Intellectual Property Office.
His invention was a computer-assisted method of choosing paint color according to one’s mood and emotions. The patent was denied as the CIPO found that the applications were not directed to a patentable subject matter and were more abstract. The denial was based on the “problem-solution” approach and an application of the “mere scientific principle or abstract theorem”.
In the appeal proceedings all sides agreed that the CIPO was in error and the case should be handed back for reconsideration.
The IPIC urged that the court offer explicit guidance to the CIPO on how to assess subject-matter patentability of computer-implemented inventions.
Thus, in place of the problematic problem-solution approach the IPIC proposed a three-part test which was to be applied in the reconsideration of the Benjamin Moore case:
1. Purposively construe the claim.
2. 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
3. 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.