Benjamin Moore & Co. Vs Attorney General Of Canada

DATE OF JUDGEMENT: 17.06.2022
CASE NO: T-1340-20 and T-1341-20 [2022 FC 923]
CASE TITLE: Benjamin Moore & Co. Vs Attorney General Of Canada
NAME OF HON'BLE COURT: Federal Court of Cananda
NAME OF HON'BLE JUDGE: The Associate Chief Justice Gagné

Important Finding in the Decision: 1. While doing the claim construction in the claim of a Patent, purposive construction has to be applied, instead of problem solving test.

2. The key to purposive construction is the identification by
the court, with the assistance of the skilled reader, of the particular
words or phrases in the claims that describe what the inventor
considered to be the “essential” elements of his invention. Para 15

3.Purposive construction also indicates that according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect. Para 27 (iv).

3.The order of the commissioner was set aside as the Commissioner of Patent , instead of purposive construction , used problem solution test. Para 15,16,21, 36.

4.The evaluation of Purposive construction entails the following steps.(Para 27).

(e) The claims language will, on a purposive construction, show
that some elements of the claimed invention are essential while
others are non-essential. The identification of elements as essential
or non-essential is made.

(i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates.

(ii) as of the date the patent is published.

(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or

(iv) according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;

(v) without, however, resort to extrinsic evidence of the inventor's intention.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539