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05 October 2020
In a significant decision released on 21 August 2020 (Choueifaty v Canada (Attorney General) 2020 FC 837), the Federal Court rejected the Canadian Intellectual Property Office's (CIPO's) approach to examining computer-implemented inventions. Choueifaty could significantly affect how CIPO assesses patent-eligible subject matter and have important implications for the patentability of diagnostic methods.
CIPO uses a problem-solution approach for determining the essential elements of patent claims. This approach involves:
This approach has been particularly problematic for applicants seeking patents for computer-implemented inventions, as it allows CIPO to easily disregard computer elements in claims as non-essential on the basis that they are not necessary to achieve a particular solution. Without the computer elements, such inventions are often rejected as not patent eligible because the remaining elements of the claims lack physicality.
In allowing the appeal by the applicant in Choueifaty, the Federal Court found that the problem-solution approach was contrary to the purposive claims construction required under Canadian law, as outlined by the Supreme Court of Canada in its decisions of Free World Trust v Électro Santé Inc (2000 SCC 66) and Whirlpool Corp v Camco Inc (2000 SCC 67). The Federal Court found that although CIPO "states that patent claims are to be construed in a purposive manner", CIPO does not "intend or direct patent examiners to follow the teachings of Free World Trust and Whirlpool".
The Federal Court directed CIPO to employ the proper purposive claims construction test outlined in Free World Trust and Whirlpool.
Briefly, a proper purposive claims construction involves a presumption of essentiality, whereby every element claimed is presumed essential, unless the following two questions are both satisfied to support a finding that a claim element is not essential:
The Federal Court emphasised that both questions must be satisfied when assessing essentiality. The problem-solution approach used by CIPO considered only whether one of ordinary skill in the art would understand that a particular claim element could be varied (or omitted) without affecting the way in which the invention works (the first bullet above) and disregarded the inventor's intention (the second bullet above). To do so was improper and akin to using the substance of the invention approach rejected by the Supreme Court of Canada in Free World Trust.
CIPO adopted the problem-solution approach for construing claims in 2013. Since that time, numerous applications (particularly applications directed to computer-implemented inventions) have been rejected as being not patent eligible because CIPO used this approach to construe certain claim elements as non-essential.
The Federal Court has now rejected CIPO's approach and emphasised the importance of the inventor's intention in proper purposive claims construction. This will make it much more difficult for CIPO to dismiss explicitly recited claim elements as non-essential.
The attorney general may appeal the decision to the Federal Court of Appeal within 30 days. However, in view of this current decision of the Federal Court, applicants should immediately consider:
For further information on this topic please contact Y Artemis Lai at Smart & Biggar by telephone (+1 604 682 7780) or email (firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
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