Assessing Patentable Subject Matter: A (Potential) New Framework

  • November 07, 2022
  • Steffi Tran, Deeth Williams Wall LLP


In recent years, the Canadian Intellectual Property Office (CIPO) has received criticism for its approach in claim construction, particularly in the context of assessing the patentability of computer-implemented inventions. CIPO’s approach has involved: (i) identifying a problem disclosed by a patent application; and (ii) construing the essential elements of a claim as those which are necessary to achieve a disclosed solution to an identified problem (i.e., the “problem-solution” approach). It has been especially difficult for patent applications involving computer-implemented inventions to overcome CIPO’s “problem-solution” approach, as CIPO examiners have generally deemed computer elements as non-essential, often resulting in the rejection of such inventions on grounds of ineligible subject matter.

On June 17, 2022, the Federal Court released its decision in Benjamin Moore & Co. v Canada (Attorney General), 2022 FC 923 (Benjamin Moore), directing CIPO on a new, proper framework for assessing patentable subject matter.