Decision

Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168

Justice Gauthier; Justice Locke; Justice Roussel - 2023-07-26

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The Commissioner refused the applications on the ground that the claims therein were directed to non patentable subject matter and therefore non-compliant with section 2 of the Patent Act. ... As will be explained, the Federal Court erred for various reasons in including the test set out at paragraph 3 of its judgment. ... It is difficult to understand why the Commissioner should look at the exclusions set out in subsection 27(8) before even examining whether the subject matter falls under the definition of an “invention” at section 2 of the Act. It may be practical for the Commissioner to do so in certain circumstances, but there is no basis for including this order in a legal test. ... Thus, while Amazon does not settle the issue of whether, once the claims have been purposively construed, the Commissioner may consider the concepts of novelty or ingenuity in assessing patentable subject matter under section 2, on my reading of the reasons as a whole, it certainly does not preclude such an exercise. ... To summarize, I find that apart from paragraph 3a, the test is not supported by the Canadian case law and deals with issues that have yet to be considered. It is also contrary to this Court’s decision in Amazon, which is a binding authority on the Federal Court. These errors justify our Court’s intervention. Moreover, there was no need to include paragraph 3a in the judgment, as there was no longer any dispute between the parties when they came before the Court that it was the law.

Decision relates to:

 

Canadian Intellectual Property