In Canada (AG) v. Benjamin Moore & Co. 2023 FCA 168, the Federal Court of Appeal rejected the test put forward by the lower court to determine the patentability of computer implemented inventions. The Appeal Court did not put forward a new test or guidelines to assess the patentability of computer implemented inventions resulting in continued uncertainty surrounding how the patentability of such inventions are to be assessed.

In the earlier decision, Benjamin Moore & Co. v. Canada (AG), 2022 FC 923, the Federal Court dealt with the issue of patentability of two Canadian patent applications (Nos. 2,695,130 and 2,695,146) for computer-implemented inventions relating to colour selection methods.

The lower court deemed that the Commissioner of Patents had erred in their determination that the inventions were non-patentable subject matter. The Court ordered that the Commissioner re-evaluate the applications using the subject-matter eligibility three-part test proposed by the third-party intervener, the Intellectual Property Institute of Canada. Further, that the test be used in light of Practice Notice PN2020-04, which details the purposive construction of a patent claim.

The three-part test proposed by the intervener is as follows: “a. Purposively construe the claim; b. 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 c. 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 appealed the trial court’s decision on the basis that the three-part test should be rejected or amended to reflect “more than a bare practical application.”

The Court of Appeal allowed the appeal and found that the lower court erred in including the test stating that “apart from paragraph 3a, the test is not supported by the Canadian case law and deals with issues that have yet to be considered.” Instead, the Court of Appeal stated that the test proposed by the trial judge should be rejected and replaced altogether. In its place, the Court of Appeal found that the subject patent applications should be evaluated on an expedited basis, while considering the most current version of the MOPOP and the FCA decision. Currently, both applications are before the Patent Appeal Board and no decision has been made about their patentability further to the Order of the FCA.

In light of the Federal Court of Appeal ruling, the three-part test itself was not evaluated, and simply removed from consideration in the redetermination of these patent applications as the FCA stated that it does not have the jurisdiction in this case to issue general instructions. Further guidance from the Canadian courts remains highly anticipated, given the lack of a concrete approach to evaluate future computer-implemented invention applications, and those applications currently before the Patent Office.

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