Benjamin Moore & Co (Re): Color Selection System Patent Application Refused by CIPO
Canada’s Patent Commissioner refused Benjamin Moore & Co’s application CA2695146A1, finding all 36 claims for a color selection system unpatentable under sections 2 and 27(8) of the Patent Act. The decision, affirming the Patent Appeal Board’s recommendation, leaves Benjamin Moore six months to appeal to the Federal Court of Canada.
CIPO refuses all 36 claims of Benjamin Moore’s color selection system
Benjamin Moore & Co, represented by Smart & Biggar LP, sought Canadian patent protection via application CA2695146A1 for a color selection system. The application was examined by the Canadian Intellectual Property Office and referred to the Patent Appeal Board following adverse examination. The Board reviewed claims 1 to 36 and issued a recommendation to refuse the application on the basis that the claimed subject matter fell outside the definition of ‘invention’ in section 2 of the Patent Act and was prohibited by subsection 27(8).
The Commissioner of Patents concurred with the Board’s recommendation and, exercising authority under section 40 of the Patent Act, refused to grant a patent for the application. All 36 claims on file were found to define subject matter that does not constitute patentable invention under Canadian law. The decision closed on 22 August 2025. Benjamin Moore retains the right under section 41 of the Patent Act to appeal the Commissioner’s decision to the Federal Court of Canada within six months of the ruling.
The refusal of all 36 claims on subject-matter eligibility grounds — rather than novelty or obviousness — suggests the application may have covered abstract or non-technical subject matter, which is consistent with the type of analysis applied by CIPO to computer-implemented inventions under Canadian doctrine. The filing date is not recorded in the public case data, making it difficult to assess the full prosecution timeline. Whether Benjamin Moore elects to appeal to the Federal Court, and on what grounds, remains unknown from the public record.
Filing to Unpatentable in 0 days
Case closed on 22 August 2025 — filing date not recorded in public register
Commissioner’s refusal: what the section 2 and 27(8) finding means
Section 40 refusal: Commissioner acts on Board recommendation
Under section 40 of Canada’s Patent Act, the Commissioner of Patents may refuse an application where the Patent Appeal Board recommends it. Here, the Commissioner agreed that claims 1–36 define subject matter falling outside the definition of ‘invention’ in section 2 and are prohibited by subsection 27(8), which bars patents for mere scientific principles or abstract theorems. This is an ex parte administrative determination — not a court judgment — but carries binding effect unless appealed.
Subject-matter ineligibilityAll 36 claims refused — appeal window remains open
Benjamin Moore loses the benefit of patent protection for the color selection system in Canada as filed. Crucially, section 41 of the Patent Act preserves a six-month right of appeal to the Federal Court of Canada from the date of the Commissioner’s decision. If no appeal is filed, the refusal becomes final. The applicant may also consider whether a divisional or continuation approach, with claims reframed to satisfy section 2, is viable — though this depends on prosecution history estoppel.
Appeal right preserved — 6 monthsCompetitors face no Canadian patent barrier — for now
With CA2695146A1 refused, competitors developing color selection systems for the paint and coatings sector face no blocking patent from Benjamin Moore on this application in Canada. This creates a window for competing products or platforms to enter the market without an infringement risk from this specific application. Should Benjamin Moore appeal successfully, the landscape could shift — market participants should monitor Federal Court docket activity.
Freedom to operate — CanadaCIPO’s treatment of computer-implemented tools remains restrictive
This refusal is consistent with CIPO’s established approach to computer-implemented inventions and data-processing systems, where claims perceived as covering abstract subject matter — such as processes that exist primarily as mental steps or disembodied data manipulation — routinely fail section 2 analysis. For R&D and IP teams in the paint, retail design, and digital color technology sectors, this case reinforces the need to anchor claims firmly to a specific, practical, technical improvement when drafting Canadian patent applications.
Computer-implemented invention riskFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Benjamin Moore & Co (Re) | Company | Paint and coatings company — applicant for CA2695146A1 color selection systemSearch in Eureka ↗ |
| Defendant | Defendant | Individual | No defendant — ex parte Commissioner’s refusal proceeding before CIPOSearch in Eureka ↗ |
| Plaintiff law firm | Smart & Biggar LP | Law Firm | Representing Benjamin Moore & Co (Re)Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | CIPOSearch in Eureka ↗ |
Official order — verbatim text
The Commissioner’s decision is unambiguous in scope: all 36 claims on file are refused, with no partial allowance. The dual statutory basis — section 2 (definition of invention) and subsection 27(8) (prohibition on abstract principles) — suggests the application was characterised as covering non-patentable subject matter at its core rather than failing on formal or prior art grounds. This phrasing is consistent with CIPO’s approach to computer-implemented inventions where the ‘actual invention’ is deemed to be an abstract idea. The explicit reference to the section 41 appeal right indicates the Commissioner’s decision is final at the administrative level but not beyond challenge.
CA2695146A1 — Color Selection System patent application
CA2695146A1 is a Canadian patent application filed by Benjamin Moore & Co in the field of color selection technology. The application — designated by its application number rather than a granted patent number — covers a color selection system, which in the paint and coatings context typically encompasses computer-implemented tools for color matching, palette generation, or consumer-facing color decision support. The Commissioner found all 36 claims define subject matter outside the section 2 definition of invention, indicating a subject-matter eligibility issue rather than a novelty or inventive step deficiency.
For a company of Benjamin Moore’s market position, securing patent protection on a color selection system would have strategic value as digital and in-store color tools become key competitive differentiators in the paint retail sector. The refusal means this particular application does not create an IP barrier in Canada. Competitors and technology providers in paint retail, interior design software, and color data platforms should nonetheless assess whether related Benjamin Moore IP — including any granted patents in other jurisdictions covering similar technology — creates enforcement risk in their markets.
Should you run an FTO against CA2695146A1?
If your team is developing a color selection platform, digital color matching tool, or consumer paint advisory system for the Canadian market, CA2695146A1 is currently refused and does not grant patent rights in Canada. However, the six-month appeal window means this status may change. Product and IP teams should monitor the Federal Court of Canada for any appeal filing by Benjamin Moore, and should also audit Benjamin Moore’s broader patent portfolio for granted rights covering color selection technology in the US, EU, and other relevant markets.
PatSnap Eureka’s FTO Search Agent enables R&D and legal teams to map live and pending patent rights in the color selection and digital design-tool space across multiple jurisdictions simultaneously. You can identify related Benjamin Moore applications, track appeal and prosecution status in Canada, and benchmark claim scope against your product’s technical architecture — helping you make informed go/no-go decisions before launch.
Run a freedom-to-operate analysis on CA2695146A1 to assess your product’s exposure
Run FTO in Eureka →Similar CIPO refusals: computer-implemented invention eligibility cases
Cases involving CIPO subject-matter eligibility refusals for computer-implemented inventions under section 2 of the Canadian Patent Act, decided before the Commissioner and the Federal Court.
What this case signals for the digital color technology IP landscape
CIPO’s refusal of Benjamin Moore’s color system application highlights persistent subject-matter eligibility risk for software-adjacent IP in Canada.
Canadian subject-matter eligibility is a genuine barrier for color tech IP
The refusal of all 36 claims under sections 2 and 27(8) suggests the application was characterised as covering abstract or non-technical subject matter. Companies filing color selection or design-tool patents in Canada should ensure claims are drafted to demonstrate a concrete technical effect, not merely a functional outcome or user-experience improvement.
The six-month Federal Court appeal window is a live strategic decision
Benjamin Moore’s IP and legal teams face a time-sensitive choice: appeal to the Federal Court under section 41, abandon the application, or reassess the claim strategy. Precedents from the Federal Court on computer-implemented invention eligibility — including decisions post-Amazon and Choueifaty — may inform whether an appeal carries a viable prospect of success.
Benjamin v Defendant — key questions answered
The Commissioner of Patents refused to grant a patent for application CA2695146A1, agreeing with the Patent Appeal Board’s recommendation that all 36 claims define subject matter outside the definition of invention under section 2 of the Patent Act and prohibited by subsection 27(8). The refusal was issued under section 40 of the Patent Act on 22 August 2025.
Yes. Under section 41 of the Canadian Patent Act, Benjamin Moore has six months from the date of the Commissioner’s decision to appeal to the Federal Court of Canada. The Federal Court has jurisdiction to review the Commissioner’s findings on subject-matter eligibility and may direct grant if it finds the Commissioner erred in law or in the application of section 2.
The Commissioner concurred with the Patent Appeal Board that the claims define subject matter outside the section 2 definition of ‘invention’ and prohibited by subsection 27(8) of the Patent Act. This typically applies where CIPO characterises the core of the claimed invention as an abstract idea, mental process, or disembodied data scheme rather than a practical, technically-grounded invention — a common issue for computer-implemented systems.
No. The Commissioner’s refusal is limited to the Canadian patent application CA2695146A1. Benjamin Moore may hold granted patents or pending applications covering similar color selection technology in the United States, Europe, or other jurisdictions. Those rights are unaffected by this CIPO decision. Competitors should conduct jurisdiction-specific FTO analysis to assess their exposure in each relevant market.
Subsection 27(8) of the Patent Act expressly prohibits granting a patent for a mere scientific principle or abstract theorem. In CIPO practice, this provision is applied alongside section 2 to refuse applications where the claimed invention is characterised as lacking a physical or technical embodiment. Its invocation here, alongside the section 2 finding, suggests CIPO viewed the core of Benjamin Moore’s color selection system claims as abstract rather than constituting a patentable art, process, machine, manufacture, or composition of matter.
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