Back to the Drawing Board: Canada’s Subject-Matter Test for Software Patents 

Written By: Liz Gray – IP Lawyer & Sara Andrusky – Law Student

The Canadian Federal Court of Appeal (“FCA”) recently released its long-awaited decision in the case of Benjamin Moore (Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168).  As we have previously reported, the lower court judgement imposed a three-part test for subject-matter patentability on the Commissioner of Patents. Much of the hearing before the FCA concerned the nature of this test, and whether the Federal Court was right to impose it. 

The FCA has now struck down that test (on largely procedural grounds) and sent the Benjamin Moore patent applications back to the Commissioner. The FCA’s current decision contains no new test: rather, the Commissioner is simply to apply the purposive construction approach, base its conclusions in Canadian law (including Whirlpool, Free World Trust, and Amazon) and not revert to the imported and baseless ‘problem-solution approach’. The FCA also included some words of warning: 

[84] … it is worth repeating that caution should be exercised in developing principles derived from specific cases decided on their particular factual matrix and extrapolating them to other cases involving distinct facts, and in using “catch phrases, tag words, and generalizations” (Amazon at paras. 53-54), including “technological neutrality”. These statements apply equally to the Commissioner and [the intervenor] IPIC.  

[85] All participants should keep in mind the particular difficulties arising from the realization of potentially unpatentable subject matter by programming it into a computer by means of a formula or algorithm (abstract ideas) (Amazon at para. 61). In the same vein, 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. 

We are eagerly watching for a possible appeal of Benjamin Moore, and for what the FCA’s comments will mean for the evolution of patentable subject matter in Canada! 

In the meantime, please contact our team of experts with any questions about patentable subject matter or software patents in Canada.