For several years now, patent practitioners in Canada have argued with the Patent Office that their Practice Notices on Subject Matter Eligibility, and the Manual of Patent Office Practice (MOPOP) “problem-solution approach” were not correct application of Canadian law, and were therefore ultra vires. These arguments have largely fell on deaf ears. In the Federal Court decision in Choueifaty v Canada, 2020 FC 837, Justice Zinn has affirmed these arguments, essentially chastising the Patent Office with the following statements:
It is evident on a reading of the MOPOP that the Commissioner, notwithstanding stating that the patent claims are to be construed in a purposive manner, does not intend or direct patent examiners to follow the teachings of Free World Trust and Whirlpool… The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada in Free World Trust… The Commissioner erred in determining the essential elements of the claimed invention by using the problem-solution approach, rather than the approach Whirlpool directs to be used.
In particular, the Federal Court affirmed that the inventor’s intent can be used to establish that a particular element, i.e. a computer processor, is an essential element in a patent claim. This case will hopefully have dramatic impact on Canadian practice, particularly in fields where the Patent Office practice has been devastating, such as the computer arts and pharmaceutical diagnostic methods. Hopefully, the Patent Office will take heed, amend their Practice Notices and MOPOP Practice Notices accordingly. Applicants in such fields should expect to see more positive results on subject matter eligibility from the Office.
Practice Points
(a) If you are hesitating about filing in Canada because of subject matter eligibility, file away! This Federal Court decision is an indication that these types of claims may be more positively viewed in the future.
(b) If you have abandoned an application in the last year due to subject matter eligibility, consider reinstatement. For a modest fee, the Patent Office will reconsider your claims, hopefully in light of the new Federal Court guidance.
A link to the full decision is available here: https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/484418/index.do
Additional articles on this series to follow.