Canada’s Intellectual Property Firm

UPDATE: In June 2022 the Federal Court released a decision establishing a new three-step legal framework for assessing patentable subject matter, particularly as it relates to the patentability of computer-implemented inventions, in Benjamin Moore & Co v Canada (Attorney General), 2022 FC 923. The decision rebukes several aspects of the Canadian Intellectual Property Office’s (CIPO) current “actual invention approach” outlined in our November 2020 update that was adopted following the Choueifaty decision discussed in the article below, and instructs CIPO to use the new three-step framework instead. Read more about the new three-step framework in our recent IP update.

In a significant decision released August 21, 2020, Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty], Canada's Federal Court rejected the Canadian Intellectual Property Office’s (CIPO) approach to examining computer-implemented inventions. The Choueifaty decision could significantly impact how CIPO assesses patent-eligible subject-matter and have important implications for the patentability of diagnostic methods.


CIPO’s current “problem-solution approach”

CIPO uses a “problem-solution approach” for determining the essential elements of patent claims. This approach involves:

  1. identifying a problem disclosed by a patent application; and
  2. construing the essential elements of a claim to be those elements which are “necessary to achieve a disclosed solution to an identified problem”.

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 the computer elements 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.

Choueifaty rejects CIPO’s “problem-solution approach”

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 [Free World Trust] and Whirlpool Corp v Camco Inc, 2000 SCC 67 [Whirlpool], finding 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”.

CIPO is required to employ the proper purposive claims construction test

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:

  1. Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.
  2. Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.

The Federal Court emphasized that both branches have to be satisfied when assessing essentiality. The “problem-solution approach” used by CIPO only considered whether one of ordinary skill in the art would understand that a particular claim element could be varied (or omitted) without affecting the way the invention works (see 1 above) and disregarded the intention of the inventor (see 2 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.

Conclusion and future implications

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 emphasized the importance of the intention of the inventor 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:

  1. Reinstating applications abandoned due to subject-matter eligibility rejections. Applications can generally be reinstated within 12 months of the date of abandonment. 
  2. Appealing any unfavourable Patent Appeal Board decisions decided prior to Choueifaty on the basis of subject-matter eligibility rejections. Decisions can be appealed to the Federal Court within six months of the date of the Notice of Refusal.

For more information on patent eligibility, please reach out to a member of our Patents practice group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.