New Test in Canada for assessment of software inventions patentability

A new test has been adopted by the Intellectual Property Institute of Canada (IPIC) which was suggested before the Canadian Federal Court. The recent judgment in Benjamin Moore & Cp v. Canada (AG) has urged the patent examiners to use this new framework while assessing inventions for patentability when computer-implemented. This new three-part test is meant to clarify and ease the assessment of the patentability of inventions which are computer-implemented ensuring that no unfair denial is made towards the status of patenting.

This all started when Benjamin Moore led to filing an appeal against the refusal of his 2 patent applications by the Intellectual Property Office of Canada. His invention was a method with computer assistance with a choice of paint colours depending on a person’s mood and emotions. This was refused due to findings by the CIPO that these applications were more abstract and not related to a patentable subject matter. The dismissal was based on the approach of “problem-solution” and application of “mere scientific principle or abstract theorem”.

While the appeal proceedings were going on, all sides agreed to the fact that CIPO was in an error and the case should be given for reconsideration. The IPIC also confuted that the court should provide clear-cut and straightforward guidelines to the CIPO as to how to assess these cases of subject-matter patentability for computer-implemented inventions. Hence, instead of the “problem-solution” approach, the IPIC  found a three-part test which would be applicable while reconsidering the Benjamin Moore case. These are –

1. To understand the claim, reasonably.
2. To question themselves if the claim entirely consists of just a scientific principle or abstract theorem or if the claim has a practical application which engages a scientific principle or abstract theorem.
3. If the claim has a practical application, to assess the claim for the patentability criteria : statutory categories, judicial exclusions, novelty, obviousness, and utility.

REFERENCES

1. https://patentresearch.wixsite.com/ipnewsbulletin/post/new-test-in-canada-for-assessment-of-software-patents-patentability
2. https://www.mondaq.com/canada/patent/1206584/federal-court-adopts-ipic39s-proposed-test-for-the-patentability-of-computer-implemented-inventions
3. https://www.pckip.com/article/choueifaty-new-test-software-inventions
4. https://www.dentons.com/en/insights/alerts/2020/june/22/software-patentability-in-canada-and-beyond

This article has been authored by Deeksha Agarwal during her internship with MikeLegal

Image source: https://economictimes.indiatimes.com/news/how-to/how-to-go-about-patent-filing-in-india-all-you-need-to-know/articleshow/86417211.cms