Patenting Software in Canada: More Evolutions of the Test?

By: Liz Gray (IP Lawyer)

Oral arguments were heard today at the Federal Court of Appeal in the case of Benjamin Moore & Co. v. Attorney General of Canada (“Benjamin Moore”).

As we previously reported, the Federal Court ordered the Commissioner of Patents (i.e., the Canadian Intellectual Property Office, “CIPO”) to apply a three-part test to determine whether a patent claim contains patentable subject matter.  That three-part test was as follows:

  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.

The Attorney General of Canada, representing CIPO, submitted that this test prevents the Office from complying with earlier cases. The AGC counsel particularly cited the cases of Amazon (2011 FCA) and Schlumberger (1981 FCA).

In today’s hearing, JAs Gauthier, Locke, and Roussel, and counsel for the parties discussed the determination of ‘essential elements’ to purposively construe a claim. In particular, they asked whether only a single determination of the essential elements should be sufficient. CIPO recently proposed an ‘actual invention’ test, in which the essential elements are reanalyzed to identify which ‘essential elements’ form the actual invention.  The ‘actual invention’ step often removes computer elements from the claims. As JA Gauthier pointed out, however, this risks combining the analysis of novelty and non-obviousness with the determination of patentable subject matter.

We are very excited to see the results of today’s hearing and will be keeping a close eye out for the FCA’s decision! We expect it to be released later this spring.

In the meantime, please contact our team of experts, Natalie Raffoul, Art Brion, and Liz Gray, with any questions about patentable subject matter or software patents in Canada.