New 3-Step Approach For Patentability as outlined by the CIPO and Benjamin Moore

New 3-Step Approach For Patentability as outlined by the CIPO and Benjamin Moore

Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

In the case of Benjamin Moore & Co. v Canada (Attorney General) the Federal Court has addressed a long-standing complicated issue in patent law, computer-related subject matter. The Federal Court adopted a new 3-step framework for assessing patentable subject matter in electronics and computer-implemented inventions.

This case is an appeal by Benjamin Moore for the rejections the company received regarding its patent applications. Its applications were for computer-implemented inventions for selecting and displaying colours based on colour harmony and emotion. The Canadian Intellectual Property Office (CIPO) rejected the claims using the problem-solution approach. The problem-solution approach has been replaced by the actual invention approach in 2020 as established in Choueifaty.

The problem-solution approach involved:

  1. “identifying a problem disclosed by a patent application; and
  2. construing essential elements of a claim to be those elements which are necessary to achieve a disclosed solution to the identified problem”

The problem-solution approach allowed CIPO to disregard claim elements that they deemed were not necessary for the described solution. In Choueifaty, the court held that this approach disregarded the intention of the inventor. This led to the actual invention approach in which CIPO engages in:

  1. “identifying ‘essential elements’ of a claim using purposive construction; and
  2. determining an ‘actual invention’ of the claim, and then whether the determined “actual invention” has physicality.”

In this approach, CIPO considers an actual invention as the combination of elements that work to apply a solution, however CIPO is still identifying a problem and a solution to assess which elements should be disregarded.

In light of using the wrong approach, CIPO argued that since its rejections were incorrect, the proper decision was to send the applications back to them for re-assessment using the correct approach. However, arguments against CIPO convinced the court that CIPO “regularly misconstrues the patentability of computer implemented inventions” and that CIPO’s misapplication of the law warrants the court’s intervention.


The court decided to send Benjamin Moore’s applications back to CIPO for re-assessment and instructed CIPO to use a new test, as proposed by the Intellectual Property Institute of Canada (an intervener in this case). This test outlines that when assessing a claim, the examiner should:

  1. Purposively construe the claim;
  2. 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
  3. 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.

Under Step 1, the essential elements of the claim will be identified using purposive construction. Purposive construction assumes that every element in a claim is essential, unless the following two questions are satisfied in determining that an element is not essential:

  1. “Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.
  2. Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.”

In step 2, the prohibitions in s. 27(8) of the Patent Act are applied to the construed claim as a whole and all of its essential elements (in contrast to the actual invention approach where it was applied to the actual invention). Step 3 involves assessing the construed claim under any remaining criteria, including statutory requirements and judicial exceptions.

This new test adapts the understanding of the nature of the “physicality requirement” for patenting advancing technology. It also ensures consistency between how the law is applied by CIPO and the courts to patents and between how the law is applied to computer-implemented inventions and other inventions.

It is unknown how the new test will be applied in practice by CIPO and whether it will be appealed. It is noted that applying the new test makes CIPO more similar to the United States Patent and Trademark Office (USPTO) in assessing eligibility. Ultimately, this decision illustrates that the patent system needs to and will evolve to encourage technological inventions and innovators in Canada. It has been suggested that unlike with the previous approaches, since the new test assesses the “construed claim as a whole,” it would prevent some computer-implemented inventions from being ineligible for patentability in cases where the invention is aimed at an abstract idea only.