Patent Law Update: FCA hits ‘Ctrl + Alt + Delete’ on proposed Benjamin Moore Test

The Federal Court of Appeal addressed the legitimacy of a legal test for assessing the patentability of computer-related technologies, proposed by the Federal Court in Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923. Justice Gauthier delivered the unanimous decision on July 26, 2023, electing to “delete paragraph 3 of the judgment”, thereby erasing the entire three-stage test.

The FCA found the test places a limit on the Commissioner’s “consideration of the concepts of novelty and ingenuity to the analyses in application of sections 28.2 and 28.3 of the Patent Act” — a limitation for which there is “no basis in Canadian case law”. Further, they found the second and third stages of the test, which require an ingenuity assessment only after an assessment of novelty, contradict the FCA’s statement in Amazon Inc v Canada (AG), 2011 FCA 328 that “patentability elements need not be considered by the Commissioner in any particular order”.

Overall, the FCA found the proposed Benjamin Moore Test lacked support in Canadian case law, and, for the same reason, the Court declined the opportunity to propose their own amended test, stating it would be “premature to do so”. The determination of patentability for computer-related technologies remains highly fact-specific and guidance from an experienced patent lawyer remains a critical resource for those seeking to expand their computer-related patent portfolio.

Read the full decision here: https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/521232/1/document.do