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2022 FC 923: Benjamin Moore and Co. v. Attorney General of Canada

2022 FC 923: Benjamin Moore & Co. v. Attorney General of Canada

Benjamin Moore & Co. appealed the decisions made by the Commissioner of Patents on CA 2,695,130 & CA 2,695,146 that the claims for these applications do not comprise patentable subject matter, under section 2 of the Patent Act, as the Commissioner determined the essential elements of each invention constituted a mere abstract theorem.

The Commissioner erred by applying the wrong test for claim construction and patentable subject matter. She did not use the purposive construction approach to determine whether the actual invention is patentable. She construed the claims by identifying novel aspects and ignoring computer aspects in the claims. She found her identified aspects unpatentable as “mere scientific principles or abstract theorems”. The Commissioner incorrectly applied the problem-solution approach and concluded that since there was no computer problem to be solved, the computer and associated components were not essential elements of the invention.

As a result, the Federal Court sent the applications back to the Commissioner for determination based on the framework that the Commissioner should:

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.*

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