Benjamin Moore redetermination: Canadian Commissioner of Patents refuses computer-implemented invention patent applications a second time

The Commissioner of Patents has once again determined that two patent applications for computer-implemented inventions filed by Benjamin Moore & Co. are invalid for seeking to claim unpatentable subject matter.¹

The redetermination was ordered by the Federal Court of Appeal (FCA) in Benjamin Moore & Co. v. Canada (Commissioner of Patents).² While there was no dispute in the FCA that the original Commissioner of Patent’s (Commissioner) decision regarding the subject matter of Benjamin Moore & Co.’s (BM) Colour Patents was based on an error of law, the court directed the Commissioner to apply updated current guidance on patentable subject matter – Practice Notice 2020-04 (PN2020-04) – without pronouncing on its validity.

Applying PN2020-04, the Commissioner found that the “actual invention” sought to be claimed in the BM Colour Patents related to a model that had no physical existence – akin to a “mere scientific principle or abstract theorem,” implemented through the routine use of a computer. The Commissioner also concluded that the claimed invention did not relate to the “manual or productive arts” as required, but rather sought to claim unpatentable “professional skills.”

Background: the patents, the litigation, and the aftermath

The BM Colour Patents both relate to “a computerized system for helping consumers and professional designers select satisfying combinations of colours.”³ For example, claim 1 of the 146 Application relates to a “computer implemented color selection method, comprising” a series of steps, which include user input of colour emotions into a computer, the application of a mathematical model by the computer to select colours based on the desired inputs, and an output displaying the selected colours on a screen.⁴

The procedural history of the BM Colour Patents is closely tied to the evolution of the law concerning the patentability of computer-implemented inventions under Canadian law. In short:

• The original Commissioner’s decisions refused the BM Colour Patents (the Refusal Decisions) on the grounds they were non-compliant with section 2 of the Patent Act, as they claimed non-patentable subject matter when construed according to Canadian Intellectual Property Office (CIPO) practice at the time (which involved a “problem-solution approach” to construction).
• The Federal Court (FC) later rejected CIPO’s problem-solution approach to claims construction when considering the patentability of a computer-implemented invention in Choueifaty v. Canada (AG), 2020 FC 837. As we reported, Choueifaty confirmed there is only one approach to claims construction: purposive construction. 
• Following Choueifaty, CIPO responded by issuing PN2020-04 to provide new direction for making subject-matter determinations regarding computer-implemented inventions. This Practice Notice builds upon, and in some respects, supersedes, the guidance in the Manual of Patent Office Practice (MOPOP).
• After PN2020-04 was issued, BM filed a statutory appeal of the Refusal Decisions concerning the BM Colour Patents to the FC. There was no dispute among the parties that the Commissioner had erred in applying the pre-Choueifaty approach to construction of these applications and the matter should be remitted for redetermination. However, the litigants disagreed about whether the court ought to provide additional direction to CIPO on the applicable law. The court adopted a three-part test for making patentability determinations, which it ordered the Commissioner to apply.
• On appeal to the FCA, the sole issue was whether the FC properly imposed the three-part test. As the FCA put it, the case “degenerated into what could be considered a reference on subject matter patentability under section 2 of the Act, and the statutory interpretation of subsection 27(8) of the Act in general.”⁵ The FCA allowed the appeal, struck the three-part test from the FC’s order, and replaced it with the following: the “redetermination of the patentability of these two applications should be carried out on an expedited basis, in light of the most current version of the MOPOP with the benefit of these reasons.”⁶ For more details on the FCA’s decision, see our post here.

Although the FCA directed that the redetermination ought to be conducted based on CIPO’s updated guidance, the court stopped short of pronouncing on its validity. As the Commissioner had not yet applied PN2020-04 to the case, the matter was not before the court. Furthermore, the court made clear that the legal issues concerning patentability of computer-implemented inventions are far from settled in Canadian law.⁷

As we reported, the Commissioner has continued to apply PN2020-04 since Benjamin Moore FCA.

The Redetermination Decision

In two substantially similar sets of reasons adopted by the Commissioner, the Patent Appeal Board applied PN2020-04 to reject all the original claims of the BM Colour Patents on patentable subject-matter grounds. The reasons also rejected amended claim sets in both applications, concluding they did not remedy the defects in the original claims or make them allowable.

The Commissioner began by determining that on a purposive construction, all the elements of the claims in both patent applications were essential – including the computer elements. 

Following PN2020-04, the Commissioner then went on to identify the “actual invention” of the claims for the purpose of the subject-matter analysis. The Commissioner held that this is “what is ‘put forward as novel’ or ‘what new knowledge has been added to human wisdom.’”⁸ Once identified, the “actual invention” can be evaluated to determine whether it meets the subject-matter requirements of section 2 and subsection 27(8) of the Patent Act.⁹ Applying this approach, the Commissioner held that:

[66] The actual invention in this case appears to be a collection of values (or scores) and mathematical models (see e.g. paras 36, 44–87). These values and models are intended to represent how humans may psychologically perceive and react to certain colours and colour combinations. They were derived from psychometric data on test subjects’ reactions to colours.¹⁰

Having identified the “actual invention” of the claims, the Commissioner determined the claims were unpatentable for two distinct reasons:

• The “physicality requirement” and “mere abstract theorem.” 
  • The Commissioner held that the definition of “invention” in section 2 of the Patent Act includes a “physicality requirement” that requires the “actual invention” to be “realized through practical application to effect a desired result” or a “physical embodiment.”¹¹ In addition, subsection 27(8) prohibits patenting “any mere scientific principle, abstract theorem or mathematical formula.”¹² These requirements cannot be satisfied by “programming a computer to merely process an algorithm in a well-known manner, without improving the functionality of the computer.”¹³
  • Applying these principles to the BM Colour Patents, the Commissioner found that “[b]y themselves, the derived values and models have no physical existence and do not fit within any categories of invention in section 2” and also ran afoul of the prohibition in subsection 27(8).¹⁴ The Commissioner reasoned that the computer in the claims was being used in a well-known way to speed processing, and that the claimed models did not improve the functionality of the computer system.¹⁵ As a result, “any practical application provided by the use of the computer is not part of the actual invention, and it cannot help the actual invention to fulfil the physicality requirement of section 2 or avoid the prohibition of subsection 27(8).”¹⁶ The Commissioner also rejected arguments that the physicality requirement could be satisfied by the user input step, or by the outputting of information that could be used in a physical step (e.g., selecting the final colour of the paint). ¹⁷

• Professional skill & judgment.
  • The Commissioner held that the “actual invention” must belong to one of the classes of patentable subject matter identified in section 2 – which are termed the “manual or productive arts” – regardless of the field of invention.¹⁸ In contrast, “professional skills” and “fine arts” fall outside the definition of patentable subject matter.¹⁹ The “professional skills” category applies even if a particular method may be applied by persons not in that field, and even if “the success of the method” does not “depend ‘on the skill or knowledge’ of its practitioner.”²⁰
  • Applying these principles to the BM Colour Patents, the Commissioner found that the actual invention relates to “professional skills” and “fine arts” rather than the “manual or productive arts,” as “the values and models are meant to be used to give suggestions, emulating professional services” such as designers and colour experts.²¹ The Commissioner rejected an argument that “otherwise unpatentable ‘professional skills’ may be patented so long as they are ‘inventive professional skills.’”²²

Having determined that the original claims were all unpatentable, the Commissioner turned to consider the second set of claims submitted by the applicant. The second set of claims was amended to specify an output that was “intended for a physical step.”²³ However, the Commissioner determined that the amendments did not change the “actual invention” or remedy the defects with the original claims.²⁴ Accordingly, they were rejected.

What next?

Both Commissioner’s decisions note that the applicant has six months to appeal to the Federal Court under section 41 of the Patent Act.²⁵

Meanwhile, in response to Choueifaty and Benjamin Moore FCA, CIPO recently concluded a consultation on updates to chapters 12, 17, 22, and 23 of MOPOP concerning its approach to patentable subject matter. As we reported, these proposed changes build on PN2020-04, which also formed the basis for the Commissioner’s Redetermination Decisions concerning the BM Colour Patents. However, these cases left many questions unanswered and MOPOP does not have the force of law. 

As such, the legal validity of CIPO’s revised approach to computer-implemented inventions remains to be determined in future court cases. 

The authors would like to thank Beatrice Kaiser, articling student, for her contribution to preparing this article.