Federal Court Of Appeal Of Canada Rejects Benjamin Moore’s Motion To Strike An Appeal Concerning Patentable Subject Matter Test

On November 10, 2022, the Federal Court of Appeal of Canada (FCA) in Canada (Attorney General) v Benjamin Moore & Co., 2022 FCA 194, dismissed Benjamin Moore & Co.’s (Benjamin Moore’s) motion to strike an appeal filed by the Attorney General of Canada (AGC) from a decision of the Federal Court (FC) concerning the proper legal test for assessing patentable subject matter for computer-implemented inventions.

The proceeding involved Benjamin Moore’s appeals of two decisions from the Commissioner of Patents (the Commissioner) to the FC, as previously reported by the E-TIPS® Newsletter here. The FC held that the Commissioner applied the wrong legal test for claim construction and patentable subject matter, remitted the matter back to the Commissioner for reconsideration, and instructed the Commissioner to apply a revised legal test for claim construction and patentable subject matter (the Revised Test).

The AGC filed a Notice of Appeal to the FCA seeking to quash the FC’s order instructing the Commissioner to apply the Revised Test.  In response, Benjamin Moore filed an informal motion to strike the AGC’s appeal pursuant to subsection 27(1) of the Federal Courts Act. Section 27(1) provides for appeals to the FCA against a judgment of the FC, not against its reasons for judgment.

Benjamin Moore argued that the FC’s order instructing the Commissioner to apply the Revised Test is part of the FC’s reasons, and therefore not a basis for appeal under subsection 27(1). The AGC argued that the appeal should not be struck as it is in the public interest to “provide clarity” on the correct test for determining patentable subject matter, but that directing the Commissioner to follow a specific test “would encroach on the separation of powers and the intent of Parliament”. 

The FCA dismissed Benjamin Moore’s motion to strike the appeal, finding that the FC’s specific direction to apply the Revised Test forms part of the judgment and uniquely binds the Commissioner to a particular test in a way that the reasons alone do not.  Furthermore, the FC’s direction sets out a test for the Commissioner that can be uniquely enforced, separately from the accompanying reasons.

The FCA also granted the parties’ joint request to expedite the appeal in this case.

Summary By: Anna Troshchynsky