Benjamin Moore & Co. v. Attorney General Of Canada, 2022 FC 923

Justice Gagné - 2022-06-17

Read full decision. Summary prepared by Alan Macek:

Benjamin Moore & Co. appeals two decisions by the Commissioner of Patents. ... The Appellant, Respondent, and Intervener all agree that the Commissioner erred in applying the “problem-solution” test for claim construction and for patentable subject matter. ... In this case, instead of using the purposive construction approach to determine whether the actual invention is patentable, the Commissioner construes the claims of both the 130 and 146 Applications by identifying only the novel aspects of the invention, and determines that those novel aspects are unpatentable as “mere scientific principles or abstract theorems”. ... However, the determination of the proper legal test to be applied is a question of law well within the purview of this Court. And in my view, the legal framework proposed by the Intervener and endorsed by the Applicant is in keeping with the Supreme Court’s teachings in Free World Trust and Shell Oil, and with the Federal Court of Appeal’s invitation to adapt “our understanding of the nature of the ‘physicality requirement’” as technology advances.

Decision relates to:


Canadian Intellectual Property