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Federal Court victory by Ridout & Maybee establishes consistency and clarity in Canadian patent examination

Jun 27 2022

Ridout & Maybee LLP has secured a landmark victory in the Federal Court of Canada on behalf of its client Benjamin Moore & Co., North America's premier manufacturer and innovator in paint, colour, and coatings. The decision promises greater consistency and fairness in how patents are examined in Canada.

Benjamin Moore & Co had appealed the rejection of two patent applications covering its innovative colour selection system, which enabled customers to precisely select colours for paint or other surface coverings scientifically optimized to achieve specific psychological effects. After rejection by the Canadian Intellectual Property Office (CIPO), Benjamin Moore & Co. appealed to the Federal Court of Canada, which issued a judgment in the company's favour on June 17, 2022 (Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923).

The Challenge of Patenting Computer Based Inventions

For decades, courts and patent offices in Canada and abroad have grappled with the problem of what types of computer-related innovations should be covered by the patent system. Early innovations in software were sometimes deemed too abstract and mathematical to warrant the same legal protections as new mechanical devices or industrial processes. However, as software and information processing has become increasingly central to economic and industrial development, policy makers and jurists have faced growing pressure to articulate clear reasons justifying this exclusion and clear lines demarcating patent-eligible subject matter from patent-ineligible subject matter. Uncertainty of legal outcomes, inconsistent application of law and policy, and ever-changing legal standards have drastically reduced the value of the patent system to innovators who develop software and information technology, depriving them of the benefits enjoyed by other industries and often leaving fledgling companies unprotected from unfair competition. A patent is a bargain with the public: in exchange for teaching the public how to realize a new invention, the inventor is granted a temporary monopoly on the invention. But the uncertainty inherent in the patent examination process has often meant that an inventor of a computer-related technology will disclose an invention, thereby fulfilling his or her half of the patent bargain, only to have the patent office deny protection based on arbitrary and inconsistently applied legal principles, thereby reneging on the public's half of the patent bargain. 

 Benjamin Moore's Colour Selection System 

 The technology disclosed in the two Benjamin Moore patent applications is the end result of extensive psychophysical research on the effects that exposure to different colours, and different combinations of colours, has on the human mind and body. Benjamin Moore's scientific research uncovered patterns in the relationship between colour values and human psychophysical responses. These patterns were then codified into algorithms driving a computer-controlled interface for selecting colours, thereby allowing users to select colours and colour combinations precisely tailored to achieve specific psychological effects when applied to an environment as a paint or other surface covering. 

The Contentious History of CIPO’s Subject Matter Test

The standards applied by CIPO to the patentability of computer-related inventions have been the subject of repeated litigation and perennial frustration within the patent bar and the high-tech sector. In 2011, the standards were challenged by Amazon.com, seeking allowance of its patent on “One-Click” online shopping. The Amazon case set precedents in the Federal Court and the Federal Court of Appeal that sought to bring CIPO’s practices in line with Supreme Court precedents governing patent interpretation and examination. In 2020, a significant victory for patentees was secured in Yves Choueifaty v Attorney General of Canada, with Justice Zinn of the Federal Court ordering CIPO to abandon its previous approach to assessing patentable subject matter and to instead adhere to a more straightforward and consistent procedure mandated by the Supreme Court. However, CIPO’s implementation of the order in Choueifaty was incomplete and failed to address the root of the problem.

In this most recent appeal, Ridout & Maybee LLP represented Benjamin Moore & Co. Matt Norwood headed a team consisting of Ben MakAbbas Kassam, and Erin Stuart. The Intellectual Property Institute of Canada (IPIC), a professional association of patent agents and IP lawyers in Canada, intervened in the case and argued in favour of a clearer and more consistent legal standard for the patentability of computer-based inventions. IPIC’s intervener brief supplied the test ultimately adopted by Justice Gagné in the judgment of the Court.

A Brighter Outlook for High Tech Innovators

The Federal Court's judgment replaces the arbitrary and uncertain tangle of legal principles previously applied to the examination of computer-based inventions with a single, simple test for whether a patent claim is directed to patent-eligible subject matter. Whereas previous approaches sought to isolate only the novel elements of a patent claim and assess them for patentability using a patchwork of disparate criteria, the new Benjamin Moore test evaluates a patent claim, as a whole, based on a single criterion: namely, whether the claim comprises a “practical application” of science or mathematics.

Under the new test, innovators in software and information technology should find Canada a much more hospitable jurisdiction for protecting their inventions, thereby encouraging investment in and development of Canada’s high-tech sector and facilitating the free exchange of information among scholars and entrepreneurs. Thanks to Benjamin Moore’s willingness to stand up for scientific and technical innovation, inventors, investors, and the public at large all stand to benefit in the years to come.

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Tags: Abbas Kassam, Benjamin Mak, Erin Stuart, Matthew Norwood