On June 17, 2022, the Federal Court of Canada struck down CIPO’s use of a “problem-solution” approach in assessing whether an invention qualifies as statutory subject matter in Canada. The case revolved around patent applications for Benjamin Moore’s color selection system.
CIPO’s approach to software patent eligibility has now been struck down three times since 2011. The case should generally be seen as “good-news” for those who seek to protect software inventions in Canada.
As the courts and CIPO tussle on this issue, the repeated theme is that CIPO’s “problem-solution” test for software patent eligibility is inconsistent with principles of claim construction and statutory subject matter as defined by Canada’s top courts. The “problem-solution” approach is derivative of the European Patent Office’s approach to obviousness, but has been held to be inapplicable to questions of Canadian patent eligibility. Rather Canadian Courts have emphasized that statutory subject matter should be based on a single claim construction that is applicable to the full range of patent issues including infringement and validity. Canadian Courts discourage peering into the essence of the invention in favour of a claim construction approach that interprets the claim elements and ascertains which elements are essential and which are non-essential, with a presumption that all elements, including recited computer-elements, are essential.
According to The Federal Court, CIPO should approach examination in the following manner:
- Purposively construe the claim;
- 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
- 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.
PCK IP is a leading firm in the drafting and filing of fin-tech and software patents around the globe. For more information on this case and how to protect your software inventions, contact Andrew Currier at email@example.com.
 Benjamin Moore & Co. vs The Attorney General of Canada 2022 FC 923, Justice Gagne reaffirmed
 Free World Trust v Électro Santé Inc, 2000 SCC 66 and Whirlpool Corp v Camco Inc, 2000 SCC 67; Amazon, Choueifaty
 Benjamin Moore, paras 43 and 52.
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