On November 7, 2024, Bill C-244, An Act to amend the Copyright Act (diagnosis, maintenance and repair)1 received royal assent, adding a new exception to the provisions governing technological protection measures (TPM) in the Copyright Act (CA). This legislative amendment adds section 41.121 to the CA, making it legal to circumvent TPMs for product maintenance, repair and diagnosis. What it means The new section 41.121 is expected to have a limited impact on the Canadian repair market. Although repairers can now circumvent TPMs to diagnose, maintain or repair a customer’s device, it is still forbidden for repairers to use the services of a TPM circumvention specialist, and specialized circumvention equipment is still prohibited. Furthermore, the absence of a fair dealing exception in this amendment poses ongoing risks of copyright infringement for these purposes. A number of questions remain unanswered, including the scope the courts will assign to the terms “maintenance” and “repair.” Does upgrading a device with improved technology fall within the definition of maintenance, or are repairers restricted to servicing devices according to original specifications? For example, if a connected device becomes obsolete after a new security standard is adopted, would replacing its software constitute maintenance? In short, the adoption of Bill C-244 represents but a small step toward the right to repair goods, and it serves as a prime example of how reconciling property rights with intellectual property rights can be challenging. Amendments made by C-244 Section 41.121, as introduced by C-244, has three paragraphs: Diagnosis, maintenance and repair 41.121 (1) Paragraph 41.1(1)(a) does not apply to a person who circumvents a technological protection measure for the sole purpose of maintaining or repairing a product, including any related diagnosing, if the work, performer’s performance fixed in a sound recording or sound recording to which the technological protection measure controls access forms a part of the product. For greater certainty (2) For greater certainty, subsection (1) applies to a person who circumvents a technological protection measure in the circumstances referred to in that subsection for another person. Non-application (3) A person acting in the circumstances referred to in subsection (1) is not entitled to benefit from the exception under that subsection if the person does an act that constitutes an infringement of copyright. Under the new section, the protection afforded to TPMs is set aside for maintenance and repair purposes, including the related diagnosing. Subsection 41.121(2) adds that the exception also applies to a person, such as a professional repairer, who repairs a product for another person. Subsection 41.121(3) further adds that the exception applies only to situations where there is no copyright infringement; for example, copyright infringement would be a person circumventing TPMs to repair a product, but taking advantage of the situation to make an illicit copy of a computer program. Bill C-244 reintroduced certain provisions of Bill C-272,2 which had been tabled in September 2020 but abandoned after the 2021 federal election. However, unlike the original text, the amendment passed on November 7, 2024, does not allow a person to manufacture, import or distribute TPM-circumvention devices to be used to perform repairs. It is rather limited to making the act of circumvention itself legal. Origin of the problem Bill C-272 was partly introduced in response to the decision in Nintendo of America Inc. v. King,3 which had considerably dampened the TPM-containing-device repair industry. In that case, the Federal Court awarded Nintendo of America Inc. $11.7 million in statutory damages following the circumvention of its TPMs, with $20,000 awarded for each of the 585 affected games, and an additional $1 million in punitive damages. Technological Protection Measures (TPMs), also known as digital locks or digital rights management (DRM) technologies, are mechanisms used to safeguard copyrights and sensitive information in the digital domain. They regulate access to or the copying, alteration and redistribution of digital content, such as audio and video files, software and e-books. TPMs can take various forms, including access codes, passwords, encryption keys, watermarks, digital signatures, encryption methods, and integrated hardware-based protections. These measures may be embedded in the files themselves, or in the devices that read, store or distribute them. DVD encryption and video game cartridge protections are well-known examples. The World Intellectual Property Organization (WIPO) first proposed a framework for protecting TPMs in 1996, anticipating that increased internet usage might escalate copyright infringement.4 In 1999, the United States ratified the framework by passing the Digital Millennium Copyright Act (DMCA), followed by Canada’s enactment of the Copyright Modernization Act5 in 2014. This legislative amendment introduced section 41.1 and related provisions to the Copyright Act (CA), prohibiting the circumvention of TPMs. Today, TPMs are ubiquitous, appearing in cars, tractors, medical implants, printer cartridges, game consoles, and various electronic devices. The $11.7 million award to Nintendo of America Inc. pursuant to this provision had a chilling effect on the repair industry.6 In response to the Nintendo decision, Bill C-272 proposed exceptions to the prohibition on circumventing TPMs for diagnosis, maintenance, and repair activities, as specified in paragraph 41.1(1)(a) of the CA. It also included an exception for the manufacture, importation, or distribution of products designed to circumvent TPMs for these purposes, addressing the restrictions noted in paragraph 41.1(1)(c) of the CA. Harmonization with the Canada-United States-Mexico Agreement The scope of the new section 41.121 introduced by Bill C-244 was significantly narrowed to prevent conflicts with the Canada-United States-Mexico Agreement (CUSMA). Article 20.66 of CUSMA requires member countries to enforce three categories of prohibitions related to TPMs: a prohibition on offering TPM circumvention services, a prohibition on the manufacture, import, or distribution of devices intended for TPMs circumvention, and a prohibition on the act itself of circumventing TPMs. Paragraph 5 of Article 20.66 specifies certain exceptions to these prohibitions, particularly for purposes such as interoperability, encryption research (security), and government activities (most of which are addressed under sections 41.11 and following of the CA), but it does not include an exception for the repair of goods. The exception provided in section 41.121 was thus limited to the third CUSMA category which involves the prohibition on circumventing TPMs themselves, as outlined in paragraph 41.1(1)(a) of the CA. As such, the prohibitions on offering TPM circumvention services, and manufacturing, importing or distributing TPM circumvention devices, set out in paragraphs 41.1(1)(b) and 41.1(1)(c), respectively, remain unchanged, even if the purpose of circumvention is to repair a device. Introduction of ambiguous wording Legal professionals may recognize that the changes made to the definitions in section 41 present new challenges. In an attempt to clarify how the new provision’s application, the legislator has added two conflicting expressions to the definitions of “circumvent” and “technological protection measure,” which may not have been necessary. Before After Technical protection measures and information on the rights mechanism Definitions 41 The following definitions apply in this section and in sections 41.1 to 41.21. circumvent means, a)        (a) in respect of a technological protection measure within the meaning of paragraph (a) of the definition technological protection measure, to descramble a scrambled work or decrypt an encrypted work or to otherwise avoid, bypass, remove, deactivate or impair the technological protection measure, unless it is done with the authority of the copyright owner; and Technical protection measures and information on the rights mechanism Definitions 41 The following definitions apply in this section and in sections 41.1 to 41.21. circumvent means, a)        (a) in respect of a technological protection measure within the meaning of paragraph (a) of the definition technological protection measure, to descramble a scrambled work or computer program, or decrypt an encrypted work or computer program or to otherwise avoid, bypass, remove, deactivate or impair the technological protection measure, unless it is done with the authority of the copyright owner; and b)        … b)        … technological protection measure means any effective technology, device or component that, in the ordinary course of its operation, a)        controls access to a work, to a performer’s performance fixed in a sound recording or to a sound recording and whose use is authorized by the copyright owner; or technological protection measure means any effective technology, device or component that, in the ordinary course of its operation, a)        controls access to a work, including a computer program, to a performer’s performance fixed in a sound recording or to a sound recording and whose use is authorized by the copyright owner; b)        … b)        … In the first instance, the legislator specifies that definition applies to “a work or computer program,” which suggests that a computer program is not considered a work. However, the second definition uses the phrase “a work, including a computer program,” implying the opposite. These clarifications were unnecessary, since the definition of “work” already includes literary works, and section 2 of the CA expressly states that literary works include computer programs. It is unfortunate that the text was adopted in its current form despite the numerous comments on this issue during parliamentary reviews.7 Striking a balance between property rights and intellectual property rights The debates surrounding these legislative changes illustrate the inherent challenges in striking a balance between the reduction of property rights, including the right to repair goods, and the promotion of intellectual property rights. For example, the Entertainment Software Association of Canada has advocated for excluding game consoles from the new exception.8 Paul Fogolin, the association’s Vice President of Policy and Government Affairs, argued that broadly opening the right to repair goods could jeopardize the video game industry by making it almost impossible for rights holders to pursue legal action against those tampering with their protection measures.9 Charles Bernard, Lead Economist for the Canadian Automobile Dealers Association,expressed concerns about increased auto theft risks.10 Catherine Lovrics, Chair of the Copyright Policy Committee, Intellectual Property Institute of Canada, anticipated cybersecurity risks.11 Several industry stakeholders believe that making documents, software, parts, and tools available for repair could elevate the risk of cyberattacks. Industry representatives in the United States have highlighted similar risks. For instance, the Association of Equipment Manufacturerssuggests that enabling the circumvention of TPMs could compromise emission controls on equipment, potentially leading to violations of environmental laws and risks to human life.12 Others have raised concerns about product liability issues.13 According to Apple and Panasonic, today’s electronics are too complex for non-specialists to repair and, thus, broadening the right to repair could compromise consumer safety.14 Concerns about safety, security, and liability are certainly legitimate; however, it is also valid to question whether intellectual property law is the appropriate vehicle to address these issues. During review of C-244, Shannon Sereda, Director of Government Relations, Policy, and Markets for Alberta Wheat and Barley Commissions, highlighted the potential difficulties farmers face when they cannot swiftly repair their equipment. She argued that “[t]he current legislative environment in Canada supports equipment repair monopolies by allowing OEMs to prohibit the bypassing of TPMs.”15 Anthony D. Rosborough, a researcher in the Law Department of the European University Institute, corroborated this viewpoint, stating that TPMs “function principally to protect technologies, rather than works or the rights of authors.” In his view, the industry sometimes relies on copyrights for what should be more appropriately protected with patents or trade secrets.16 The relaxation of TPM rules in Canada aligns with similar measures already implemented in the United States. On October 28, the Librarian of Congress renewed a series of exceptions to section 1201 of the Digital Millennium Copyright Act (DMCA), including provisions that allow the circumvention of certain protection measures for repairs.17 These exceptions are subject to renewal every three years and have so far been renewed twice since 2018.18 Over the past few years, the United States has taken several steps to promote the right to repair goods. In May 2021, the Federal Trade Commission (FTC) filed a detailed report19 on anti-competitive practices related to the right to repair. On July 9, 2021, shortly after the report was released, the U.S. President issued an Executive Order to combat such practices and encourage the development of a third-party or owner repair market.20 Since then, multiple states have enacted laws supporting the right to repair.21 On January 8, 2023, John Deere pledged to enable independent repairers to service its equipment.22 Apple Inc., historically opposed to expanding the right to repair, shifted its stance in 2022 by launching a self-service repair program and publicly supporting California’s new right-to-repair law.23 Last year, WIPO reported that 40 states had introduced legislation in favour of the right to repair.24 Here in Canada, the adoption of Bill C-244 represents another step in establishing the right to repair goods. This measure builds on another federal bill, C-59,25 which also received assent last June and amended the Competition Act to empower courts to compel suppliers to sell diagnosis or repair tools. At the provincial level, Quebec became the first province to enact right-to-repair legislation last year. 26 In the coming months, it remains to be seen whether the new section 41.121 of the Copyright Act (CA) will unlock the repair market. For the moment, the measure strikes us as somewhat timid.27 Parliament of Canada, LEGISinfo: C-244: An Act to amend the Copyright Act (diagnosis, maintenance and repair), Parliament of Canada, online: https://www.parl.ca/legisinfo/en/bill/44-1/c-244. Parliament of Canada, LEGISinfo: C-272, An Act to amend the Copyright Act (diagnosis, maintenance and repair), Parliament of Canada, online: https://www.parl.ca/legisinfo/en/bill/43-2/c-272. Nintendo of America Inc. v. King, 2017 FC 246, [2018] 1 FCR 509. WIPO Copyright Treaty, December 20, 1996, article 11, online: https://www.wipo.int/wipolex/en/treaties/textdetails/12740. Copyright Modernization Act, S.C. 2012, c. 20, assented to on 2012-06-29, online: https://laws-lois.justice.gc.ca/eng/AnnualStatutes/2012_20/FullText.html; Canada Gazette, Vol. 146,No. 23 – November 7, 2012, SI/2012-85 Order Fixing Various Dates as the Dates on which Certain Provisions of the Act Come into Force, P.C. 2012-1392, October 25, 2012, online: https: //canadagazette.gc.ca/rp-pr/p2/2012/2012-11-07/html/si-tr85-fra.html. Graham J. Reynolds, “Of Lock-Breaking and Stock Taking - IP, Climate Change, and the Right to Repair in Canada,” in 2023 101-1 Canadian Bar Review 32, 2023 CanLIIDocs 1144, p. 54, online: https://canlii.ca/t/7n4cj. Committee on Industry and Technology, 5 December 2022, Catherine Lovrics, Open Parliament, online: https://openparliament.ca/committees/industry/44-1/49/catherine-lovrics-2/; Committee on Industry and Technology, 15 February 2023, Viviane Lapointe, Open Parliament, online: https://openparliament.ca/committees/industry/44-1/59/viviane-lapointe-5/; Committee on Industry and Technology, 15 February 2023, Andy  Fillmore, Open Parliament, online: https://openparliament.ca/committees/industry/44-1/59/andy-fillmore-6/; Committee on Industry and Technology, 15 february 2023, Patrick Blanar, online: https://openparliament.ca/committees/industry/44-1/59/patrick-blanar-1/. Entertainment Software Association of Canada, Bill C-244 – An Act to amend the Copyright Act (diagnosis, maintenance and repair), online: https://www.ourcommons.ca/Content/Committee/441/INDU/Brief/BR12209146/br-external/EntertainmentSoftwareAssociationOfCanada-e.pdf. Committee on Industry and Technology, February 8, 2023, Paul Fogolin, online: https://openparliament.ca/committees/industry/44-1/57/paul-fogolin-1/. Committee on Industry and Technology, February 8, 2023, Charles Bernard, online: https://openparliament.ca/committees/industry/44-1/57/charles-bernard-1/. Industry and Technology Committee, December 5, 2022, Catherine Lovrics, online: https://openparliament.ca/committees/industry/44-1/49/catherine-lovrics-2/. Emma Fillman, “Comprehensive Right to Repair:The Fight Against Planned Obsolescence in Canada,” (2023) 32 Dalhousie J Legal Stud 123, p. 145. online https://digitalcommons.schulichlaw.dal.ca/djls/vol32/iss1/5/. Irene Calboli, “The right to repair: Recent Developments in the USA,” World Intellectual Property Organization Magazine, August 2023, online: https://www.wipo.int/wipo_magazine_digital/en/2023/article_0023.html. Emma Fillman, “Comprehensive Right to Repair:The Fight Against Planned Obsolescence in Canada,” (2023) 32 Dalhousie J Legal Stud 123, pp. 142 and following, online https://digitalcommons.schulichlaw.dal.ca/djls/vol32/iss1/5/. Committee on Industry and Technology, February 8, 2023, Shannon Sereda, online: https://openparliament.ca/committees/industry/44-1/57/shannon-sereda-1/. Committee on Industry and Technology, February 8, 2023, Anthony D. Rosborough, online: https://openparliament.ca/committees/industry/44-1/57/anthony-d-rosborough-1/. Copyright Office, Library of Congress, Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, Federal Register, October 28, 2024, online: https://www.federalregister.gov/documents/2024/10/28/2024-24563/exemption-to-prohibition-on-circumvention-of-copyright-protection-systems-for-access-control. Copyright Office, Library of Congress, Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, Federal Register, October 26, 2018, online: https://www.federalregister.gov/documents/2018/10/26/2018-23241/exemption-to-prohibition-on-circumvention-of-copyright-protection-systems-for-access-control. Federal Trade Commission, Nixing the Fix: An FTC Report to Congress on Repair Restrictions, May 2021, online: https://www.ftc.gov/system/files/documents/reports/nixing-fix-ftc-report-congress-repair-restrictions/nixing_the_fix_report_final_5521_630pm-508_002.pdf. The White House, Executive Order on Promoting Competition in the American Economy, July 9, 2021, online: https://www.whitehouse.gov/briefing-room/presidential-actions/2021/07/09/executive-order-on-promoting-competition-in-the-american-economy/. X, Jon Campbell, December 29, 2022, online: https://twitter.com/JonCampbellNY/status/1608327624526548993; Colorado General Assembly, Consumer Right to Repair Agricultural Equipment, April 25, 2023, online: https://leg.colorado.gov/bills/hb23-1011; Minnesota Legislature, Minnesota Session Laws, 93rd Legislature, Chapter 57 – S.F. No. 2744, online: https://www.revisor.mn.gov/laws/2023/0/Session+Law/Chapter/57/; Sidley, “California Becomes Third U.S.State to Join the Right-to-Repair Movement,” October 24, 2023, online: https://www.sidley.com/en/insights/newsupdates/2023/10/california-becomes-third-us-state-to-join-the-right-to-repair-movement. John Deere, Memorandum of Undestanding, January 8, 2023, online: https://www.fb.org/files/AFBF_John_Deere_MOU.pdf. The Verge, “Surprise:Apple now supports California’s right to repair,” August 23, 2023, online: https://www.theverge.com/2023/8/23/23843506/apple-california-right-to-repair-sb-244. Irene Calboli, “The right to repair: Recent Developments in the USA,” World Intellectual Property Organization Magazine, online: https://www.wipo.int/wipo_magazine_digital/en/2023/article_0023.html. Parliament of Canada, LEGISinfo: C-59: An Act to implement certain provisions of the fall economic statement tabled in Parliament on November 21, 2023 and certain provisions of the budget tabled in Parliament on March 28, 2023; Parliament of Canada, online:https://www.parl.ca/legisinfo/en/bill/44-1/c-59. Québec National Assembly, Bill 29, An Act to protect consumers from planned obsolescence and to promote the durability, repairability and maintenance of goods, online: https://www.assnat.qc.ca/en/travaux-parlementaires/projets-loi/projet-loi-29-43-1.html. The author would like to thank Laura Trépanier-Champagne for her work in supporting the writing of this publication.

Last Wednesday (July 26), the Federal Court of Appeal (FCA) handed down its highly awaited decision on the patentability of computer-implemented inventions (software patents). In Canada (Attorney General) v. Benjamin Moore & Co. (2023 CAF 168), the FCA rejected the test proposed by the Intellectual Property Institute of Canada (IPIC) in the first instance decision, Benjamin Moore & Co. c. Canada. On the one hand, according to the Court of Appeal, Justice Gagné of the Federal Court should not have included IPIC’s proposed framework in the operative provisions of her ruling because it was not requested in the parties’ application. In addition, in the FCA’s opinion, establishing an analytical framework for software patents would be premature, as many issues have yet to be properly considered by any court in Canada. So, back to square one? Not quite… Review of the facts of the Benjamin Moore case (2022) This FCA decision—the most recent in the Canadian software patent saga—establishes a modicum of order against a highly unusual backdrop. For those of you who have just joined the debate, here is a short summary of the facts. As part of a national initiative, Benjamin Moore applied for two software patents in Canada in 2010.1 The software in question was designed to help users navigate a colour bank based on criteria such as “emotion” and “harmony”. In October 2014, both applications were rejected on the grounds that they dealt with non-patentable subject matter. By applying an analytical framework that the Canadian Intellectual Property Office (CIPO) referred to as a “problem-solution” approach, the CIPO examiner concluded that the inventions in question were akin to applying mathematical formulas to a database. Mathematical formulas, however, are not patentable. In May 2020, the Patent Appeal Board confirmed CIPO’s decision. In November 2020, Benjamin Moore appealed the decision before the Federal Court. In an unusual move, during a hearing on March 30, 2022, the Attorney General immediately acknowledged, in light of the Choueifaty2decision handed down in the interim, that the Commissioner of Patents did not apply the right test and agreed to send the patent applications back for review. In another unusual move, IPIC intervened as a third party on the grounds that the case transcended the parties’ interests because CIPO examiners continued to apply the incorrect software patentability criteria despite repeated criticism by the courts. In so doing, IPIC sought to take the matter further with a view to making the process of granting software patents more predictable, i.e., by setting out the analytical framework that CIPO should apply when examining such cases. In a surprising judgment, Justice Gagné agreed with IPIC’s request: the patent applications were sent back for review based on IPIC’s proposed analytical framework. This declaratory judgment recognized the need for IPIC’s proposed analytical framework. Overnight, this framework became the applicable test for software patents. IPIC’s intervention in Benjamin Moore (2022) or the need to clarify the analytical framework for software patents This was not the first time that IPIC intervened as a third party in a patent case. This type of participation is not always looked on favourably by the courts, particularly with regard to administrative reviews. Moreover, last Friday (July 28), in the case of Taillefer v. Canada,3 Madam Justice McDonald rejected IPIC’s intervention after applying the FCA’s three-step test.4 In her decision, she stated that “to the extent IPIC intends to make submissions on the issue of the proper approach to statutory interpretation, as noted by the Federal Court of Appeal above, such an intervention is inappropriate”. However, a number of patent agents and jurists were delighted in 2022 to see that a more predictable analytical framework had emerged. Clearly, IPIC’s intervention was unusual, but we must revisit the long-running Canadian software patent saga to fully grasp the problem that IPIC was attempting to resolve. It should be noted that the Patent Act remains silent on the topic of software. In it, an invention is defined as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”.5 When software is being patented, we must fall back on a creative description of exactly what is involved, e.g., by describing it as a process or a storage device containing instructions that, once carried out by a computer, produce specific effects. The lack of a proper legislative framework for software leaves a void that the courts must fill by interpreting a law that was last overhauled when Windows 95 was released, along with its 13 floppy disks! In the early 1970s, the Patent and Copyright Office, tasked with examining patent applications, issued a notice for patent professionals explaining that, in its view, software was non-patentable subject matter. However, in the wake of United States v. Waldbaum,6 the Patent Office showed more openness, though it backtracked in 1978 in a bid to harmonize its practices with American and British jurisprudence at the time. In 1981, the Schlumberger case7 became the landmark decision in the area of software patents, with the court ruling that software that relied on the simple execution of a mathematical formula by a computer could not be patented. The Patent Office’s narrow interpretation led to the rejection of large numbers of patent applications. When these cases were appealed, however, most of them were deemed to contain patentable subject matter and were sent back to the examiners for further review. In 1984, CIPO’s directive became more permissive after amendments were made. In 2009, however, the Patent Office rejected an application that had been filed by Amazon, on the grounds that it dealt with non-patentable subject matter. In 2011, the FCA took the Patent Office to task for using a simplified test for evaluating software patents.8 The Patent Office appeared to be applying certain jurisprudence principles too generally, without taking the relevant facts and context into account. Amazon’s patent dealt with the use of cookies to facilitate online purchases without authentication (the famous “one-click” patent). CIPO had difficulty understanding that an invention could be entirely intangible. The patent was finally granted. However, instead of following the FCA’s recommendations, CIPO issued new practice notices in 2012 and 2013 without taking recent jurisprudence into account. The contradictions between the practice notices and the jurisprudence led to unpredictability in the patent review process, during which examiners either adhered to the practice notices or to the jurisprudence. In summer 2020, the Federal Court criticized CIPO in the Choueifaty case,9 explaining that the problem-solution approach described in CIPO’s Manual of Patent Office Practice was not in line with Canadian jurisprudence. In the aftermath of this decision, CIPO modified its practice notices by re-establishing certain principles that had actually been prohibited in the Amazon decision, such as applying principles of section 27(8) of the Patent Act to the notion of an “actual invention”, rather than to “the subject-matter defined by the claim”.10 In short, while the complexity of software grows exponentially, patent law is drawn one decision at a time, while inventors bide their time while grappling with various uncertainties. When IPIC intervened as a third party in the Benjamin Moore case and proposed an analytical framework, the hope was to put an end to 50 years of confusion and unpredictability. Unease in the aftermath of Benjamin Moore (2022) Understandably, this declaratory judgment produced a certain sense of unease among CIPO and the Attorney General, who appealed the matter in fall 2022. Following the Federal Court judgment, CIPO argued that it would be difficult for an examiner to adapt the analytical framework to new situations without risking a contempt of court charge. In addition, since the initial Federal Court application filed by Benjamin Moore was not aimed at obtaining a declaratory judgment, the Attorney General argued that the Court should have adhered to the conclusions sought by Benjamin Moore and the Attorney General. The appeal of the judgment thus focused on whether it was appropriate to issue a declaratory judgment that imposed an analytical framework at the request of a third party. Judicial minimalism — Benjamin Moore (2023) In its 41-page decision handed down on July 26, the FCA reiterated the importance of judicial minimalism while granting the Attorney General’s request to do away with CIPO’s analytical framework. The FCA was unequivocal when it came to including the analytical framework in the mechanism provided for in the lower court ruling: Given the lack of a detailed analysis in the FC Decision, the Federal Court’s statement that the current version of MOPOP (as amended by PN2020-04) was irrelevant, and the lack of consideration of all relevant case law, it appears to me that it did little more than “leapfrog” the test to our Court by including it in its judgment instead of its reasons. This exercise, which is quite different from dealing with an issue that was not necessary to determine the appeal before it in obiter, is inappropriate. It does not involve “judicial courage”, as IPIC argued before the Federal Court.11 The FCA also noted that “interveners cannot seek a remedy that was not sought by the parties themselves”.12 Moreover, it stated that “subject to limited exceptions, unless a request to include a particular framework for all computer-implemented inventions in the judgment is a remedy specifically sought in the notice of appeal, it should normally not be considered”.13 Finally, recognizing that the Federal Court does have the power to render declaratory judgments, the FCA noted that even if an application is duly submitted, the court’s “discretion to grant such relief can only be exercised after considering the four-part test set out by the Supreme Court in Ewert v. Canada, 2018 SCC 30 at paragraph 81”.14 Rejection of IPIC’s analytical framework After concluding that she could have rectified the lower court judgment by applying the four-part test, Justice Gauthier held that IPIC’s proposed framework was not adequate and that too many open questions remained that should be analyzed by the courts before any such analytical framework could be imposed. The decision, however, offered some obiter advice by emphasizing the need for patents to add to the body of human knowledge. In this regard, Justice Gauthier wrote “[The] difficulty often lies in determining where the discovery lies, i.e., what new knowledge has been added to human wisdom” and further on, “If the only new knowledge lies in the method itself, it is the method that must be patentable subject matter.” Now that IPIC’s proposed framework was rejected, practitioners will have to fall back on previous decisions to determine whether software is patentable or not. The challenge posed by software patents To understand why CIPO is reluctant to grant software patents at times, we must bear in mind that patents are an exception to the principle of competition. Section 79(5) of Competition Act15 stipulates that exercising a monopoly obtained via a patent or other intellectual property rights is not an anti-competitive act. This privilege, which is granted to the patent-holder for a 20-year period, is designed to provide compensation for the public disclosure of the invention, with potential benefits for society as a whole. The exchange principle is not a recent development: most patent systems in current use were inspired by England’s Statute of Monopolies adopted in 1623. The odds are, however, that the English in the 17th century had no inkling that software applications would ever come into existence. Historically speaking, patented inventions include a tangible component: a machine, a device, the transformation of raw materials, etc. In contrast, unpatented inventions often have an intangible quality, e.g., abstract ideas, mathematical formulas, esthetic considerations, music, etc. When software applications emerged, sophistry became inevitable! Moreover, the notion of “software” itself is hard to define. Software is more than the code used to put together an application (code is copyright-protected, rather than patent-protected). For example, two programmers following the same requirements and specifications will no doubt end up creating different implementations, compiled to different machine instructions. Once these instructions are executed, however, what could be regarded as the same software will emerge. In some ways, patenting a software is akin to patenting certain aspects of its specifications. When we are interested in a mechanical invention and we describe its fundamental components, we realize that it is made up of parts with specific shapes and sizes attached to each other. In contrast, when we break a software application down into its fundamental components, we find various states, thresholds and conditions, which are often described using abstract concepts and mathematical formulas. Unfortunately, these components are dangerously akin to a type of subject matter formally excluded by the Patent Act. Section 27(8) thereof states that “No patent shall be granted for any mere scientific principle or abstract theorem”. This exclusion is designed to ensure that scientific principles remain universally accessible with a view to fostering research and innovation. Therefore, examiners are duty-bound to reject applications that appropriate scientific principles. Depending on whether an examiner focuses on the overall objective of the software or on its individual components, he or she will conclude that it is patentable or not. The difficulty lies in recognizing that, as a general rule, software is more than a set of mathematical formulas. In other words, a much broader view is needed, i.e., one that looks at the forest as a whole, rather than at the individual trees. That is what the Canadian courts have referred to as “purposive construction”. In the Benjamin Moore case, the FCA described purposive construction as a “difficult exercise even for judges”16 and pointed out that if errors do occur, it is because “CIPO and the Commissioner simply did not properly understand all of the subtleties of this difficult exercise”.17 Striking a more positive note in the same paragraph, the judge offered reassurances that the need to apply this method should no longer be problematic because “[as] noted by the AG, the Commissioner did not appeal the decision in Choueifaty, as it did help clear up some misunderstanding in respect of purposive construction […]”. Whether or not we find that reassuring, we have to acknowledge that IPIC’s intervention might not have been the ideal solution to this problem, particularly when we realize that Benjamin Moore was taken hostage by a debate that transcends the private sphere. No doubt, IPIC’s efforts do deserve recognition. But perhaps we should also be asking ourselves whether allowing the courts to draw up an analytical framework one decision at a time is an effective way of establishing software patent law, especially when such a piecemeal manner of progression undoubtedly comes at the expense of the inventors. https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/2695130/summary.html and https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/2695146/summary.html Choueifaty v. Canada (Attorney General), 2020 CF 837. Taillefer v. Canada (Attorney General), 2023 FC 1033. Right to Life Association of Toronto and Area v. Canada (Employment, Workforce and. Labour), 2022 CAF 67. Patent Act, RSC 1985, c. P-4, sec. 2. In re Waldbaum, 559 F.2d 611, 194 USPQ 465. Schlumberger Canada Ltd. v. The Commissioner of Patents, [1982] 1 CF 845. Amazon.com, Inc. c. Canada (Procureur général), 2011 CAF 328 Choueifaty v. Canada (Attorney General), 2020 CF 837. Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328, par. 39. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 29. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 32, citing Tsleil-Waututh Nation v. Canada (Attorney General), 2017 CAF 174, para. 54-55; Zak v. Canada (Attorney General), 2021 CAF 80, para. 4 Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 34, citing Pfizer Canada Inc. v. Teva Canada Ltd., 2016 CAF 218, para. 21 to 22; Boubala v. Khwaja, 2023 CF 658, para. 27; Hendrikx v. Canada (Public Safety), 2022 CF 1068, para. 27. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 35. Competition Act, RSC 1985, c. C-34. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 43. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 44.