Federal Court of Appeal Rejects Rigid Test for Computer-Implemented Invention Patentability
Canadian patent applicants working in software and computer-implemented inventions spent much of 2023 watching one case closely. Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168, set aside a rigid, multi-step test the Federal Court had imposed on the Commissioner of Patents, and in doing so left the door open rather than settling on a replacement.
What the Commissioner Had Refused
Benjamin Moore had filed two patent applications directed to a computer-implemented method of selecting paint colours. The Commissioner refused both, on the view that the essential elements of the claims, once the computer was set aside, amounted to nothing more than an abstract algorithm applied to colour theory, and an abstract theorem is not patentable subject matter under the Patent Act.
The Federal Court's Three-Step Test
On judicial review, the Federal Court agreed the applications were correctly refused, but went further, directing the Commissioner to apply a specific three-step framework in future patentable subject matter assessments: identify the actual invention, ask whether it fell within an excluded category, then examine whether a computer was essential to it. It was this imposed framework, not the outcome for Benjamin Moore itself, that the Attorney General appealed.
Why the Court of Appeal Struck the Test Down Entirely
The Federal Court of Appeal, in a unanimous decision, held that the Federal Court had erred in imposing a specific analytical framework at all. The Court of Appeal found the second and third steps of the framework were not grounded in existing Canadian patent jurisprudence, and it declined to simply amend the test; it set the whole framework aside. In the Court's view, building a settled analytical structure for computer-implemented inventions was premature, given how many aspects of the question remained genuinely untested in Canadian law.
What This Means for Software and Computer-Implemented Applicants
For a business filing, or considering filing, a patent application with a significant software component, the practical result is a return to a less certain, more fact-specific examination environment, rather than the bright-line rule the Federal Court had attempted to impose. That uncertainty cuts both ways: a rigid rule that risked automatically excluding a category of legitimate inventions is gone, but so is the predictability it would have offered. In practice, computer-implemented applications are examined on their own claims and their own essential elements, rather than screened by a fixed formula, and CIPO's own examination guidance in this area continues to develop as more cases work through the courts.
We regularly advise clients on how to frame computer-implemented and software-related claims for Canadian examination, and on how CIPO's current practice, informed by decisions like this one, is likely to treat a particular invention.