By: Liz Gray (IP Lawyer) with research assistance by Greg Parth (Summer Student)
In a previous post, we reported on the Canadian Federal Court’s decision that the ‘problem-solution’ approach used by the Canadian Intellectual Property Office (“CIPO”) to identify patentable subject matter was incorrect in law (Choueifaty). In response, CIPO adopted what they referred to as the ‘actual invention’ test. As we’ve noted in other posts, the ‘actual invention’ test is a mixed blessing: in many ways, the new test was simply the ‘problem-solution’ test in disguise.
In a new judgement, Associate Chief Justice Gagné of the Federal Court of Canada agrees with this position. Specifically, at para.  of Benjamin Moore & Co. v. Attorney General of Canada (“Benjamin Moore”), ACJ Gagné notes that CIPO’s new approach:
“still includes the problem-solution approach, stating… that ‘An actual invention may consist of either a single element that provides a solution to a problem or of a combination of elements that cooperate together to provide a solution to a problem’.” (emphasis added)
In addition to again rejecting the “problem-solution” approach, this judgement explicitly adopts a three-part test for assessing patentable subject matter. Under this test, the Commissioner of Patents is to (emphasis added):
- 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.
This new three-part test makes clear that considerations such as novelty and obviousness are not to be used when determining whether a claim comprises a practical application. Novelty and obviousness are to be evaluated only after a practical application is found. This indicates that, for example, computer equipment considered to be an essential element of a claim does not have be novel for that claim to comprise a practical application.
This judgement is a welcome change. The adoption of the new test should speed and simplify examination for many Canadian software patent applications and should also provide certainty going forward. We’ll be keeping our eye on the effects of this case!
For specific advice on protecting software and other computer-implemented inventions in Canada, please contact one of our experts at BRION RAFFOUL.