This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 4: Software and Digital Technology Patents
Federal Court of Appeal, Canada [2023]: Canada (Attorney General) v Benjamin Moore & Co., 2023 FCA 168
Date of judgment: July 26, 2023
Issuing authority: Federal Court of Appeal
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Administrative)
Subject matter: Patents (Inventions)
Plaintiff/Appellant: Attorney General of Canada
Defendant/Respondent: Benjamin Moore & Co.
Keywords: Patentable subject-matter; Computer-implemented invention; Meaning of invention
Basic facts: This was an appeal of a decision of the Federal Court (“FC”) which granted an appeal of a decision of the Commissioner of Patents(“Commissioner”) that refused to grant patents for patent applications directed at color selection systems. Before the FC, the parties agreed that the Commissioner had erred by determining the essential elements of the claims through the problem-solution approach. In doing so, the Commissioner found the essential elements did not include the computer (controller) and other conventional associated compounds. The sole issue of dispute before the FC was whether the Court should issue instructions for the Commissioner to follow on reconsideration.
The FC allowed the appeals, concluded that the Commissioner applied the incorrect test to determine the essential elements of the claims and that the Commissioner had also erred by conducting a novelty analysis while determining the essentials elements, contrary to Free World Trust, 2000 SCC 66 and Whirlpool Corp v Camco Inc., 2000 SCC 67, which required claims construction to be conducted first. The FC also issued instructions to the Commissioner to follow the following three steps on reconsideration:
a. Purposively construe the claim;
b. 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
c. 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.
The appeal focused on whether the FC erred in setting out instructions for the Commissioner in its judgment.
Held: The appeal was allowed and the FC’s judgment was set aside
Relevant comments in relation to software and digital technology patents: The error of the Commissioner was not that she considered the problem and solution as part of her general assessment of the scope of the claims based on her reading of the applications as a whole, but rather that she identified the essential elements of the claims solely on that basis.
The FC erred and contradicted Amazon.com, Inc. v Canada (Attorney General), 2011 FCA 328 by dictating the order in which the patentability elements needed to be considered.
The FC also erred in the actual order proposed by requiring the exclusion under subsection 27(8) of the Patent Act to be considered before the categories of “invention” under section 2 of the Patent Act. The FCA considered this to be inconsistent with how the Commissioner considers inventions that do not involve computer implementation which requires subject-matter patentability to be determined by first considering the category of “invention” within section 2 of the Patent Act into which the subject-matter falls.
The FC further erred by including step c and limiting the Commissioner’s consideration of the other patentability criteria (novelty, obviousness and utility). The FCA held that it was not yet established in the jurisprudence to what extent these concepts could be considered in the application of section 2 and how this might differ from the exercises mandated under other provisions of the Patent Act relating to the determination of novelty and obviousness.
Apart from step a, the FCA found the test proposed was not supported in law and was premature. As such, it found that a test should not be imposed.
Relevant legislation:
Sections 2, 27(8), 28.2, 28.3 of the Patent Act (CA270)
Canadian Intellectual Property Office Guidelines: On March 24, 2026, the Canadian Intellectual Property Office(CIPO) issued a new practice guideline relating to patentable subject-matter, including computer-implemented inventions. The guideline referenced the Benjamin Moore decision as well as other recent jurisprudence (Dusome v Canada (Attorney General), 2025 FC 1809; Pharmascience Inc v Janssen Inc, 2024 FCA 23, now affirmed at 2026 SCC 26) and expressly stated that the “problem-solution” approach previously used by Examiners was superseded by the guideline.
Examiners are now instructed to conduct a purposive construction of the patent claims, taking into account what the person skilled in the art would understand from the whole of the specification to be the nature of the invention (Free World Trust, 2000 SCC 66 and Whirlpool Corp v Camco Inc, 2000 SCC 67). Examiners are to determine whether the computer is an essential element of the claim that works together with other elements to provide a discernible physical effect or change. The guidelines specify that if a computer merely processes an algorithm in a well-known manner, it remains unpatentable, but if processing the algorithm improves the functioning of the computer itself, it may be patentable.