Summary

Keywords

Intellectual property — Patents — Administrative law — What is the legal test for determining the subject-matter patentability for computer-implemented inventions — As a matter of administrative law, when can courts hearing statutory appeals from administrative decision-makers require those decision-makers to use a specific legal test?

Summary

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

Benjamin Moore & Co.’s applications for two patents in respect of a computer implemented colour selection method were rejected. It appealed to the Federal Court. The Intellectual Property Institute of Canada intervened and argued the Federal Court should order a revised framework for assessing the patentability of computer-implemented inventions. The Federal Court of Appeal remitted the applications back to the Canadian Intellectual Property Office to be reconsidered with instructions to adopt the test described by the Intellectual Property Institute of Canada. The Federal Court of Appeal allowed an appeal and remitted the applications to be reconsidered adopting the version of Canadian Intellectual Property Office’s Manual of Patent Office Practice current at the time of the re-hearing.

Lower Court Rulings