Canadian Court Again Rejects Problem-solution Approach To Subject-matter Eligibility Of Computer-implemented Patents

• Published date: 23 June 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Osler, Hoskin & Harcourt LLP
• Author: Mr Bradley White, Vincent M. de Grandpré, Nathaniel Lipkus and Geoffrey Langen

One of the most vexing problems in modern patent law is defining the boundaries of what constitutes allowable subject-matter for a patent. Over 40 years ago, the U.S. Supreme Court famously remarked that "anything under the sun made by man" is patent-eligible. However, the emergence of patents directed to business methods and medical diagnostic methods has challenged this approach and led to many rejected patent applications.

In recent years, the Canadian Intellectual Property Office (CIPO) has been determining the patentability of computer-implemented and other patent applications by identifying the problem and solution set out in the application. This "problem-solution" approach resulted in CIPO's rejection of many such applications. Applicants have attempted to overcome such objections by the patent office by including physical aspects of the computer in the claims.

In August 2020, the Federal Court issued the decision Yves Choueifaty v. Attorney General of Canada, 2020 FC 837 (Choueifaty), which rejected CIPO's problem-solution approach in favour of a purposive construction of the claims as set out by the Supreme Court of Canada in Whirlpool Corp v. Camco Inc, 2000 SCC 67 (Whirlpool), and Free World Trust v. Électro Santé, 2000 SCC 66 (Free World).

On June 17, 2022, the Federal Court issued its decision in Benjamin Moore & Co. v. Attorney General of Canada [PDF], 2022 FC 923 (Benjamin Moore), and for the second time rejected the problem-solution approach. The Court granted appeals from the Commissioner of Patents' (Commissioner) decisions that Canadian Patent Application Nos. 2,695,130 (130 Application) and 2,695,146 (146 Application) did not contain patentable subject-matter. The Court instructed the Commissioner to reconsider the subject-matter eligibility of the two applications using a three-part test proposed by an Intervener, the Intellectual Property Institute of Canada (IPIC).

The Commissioner's decisions were based on the problem-solution approach

The 130 Application and the 146 Application relate to Benjamin Moore's Color Selection System, a computer-implemented colour selection method that uses experimentally derived relationships for colour harmony and colour emotion.

In May 2020, the Patent Appeal Board (Panel) issued two decisions recommending that the two applications be refused because the claims were directed to non-statutory subject-matter. The Panel applied the problem-solution framework and found that a computer was not an...