Y. Artemis Lai October 5 2020 Federal Court rejects problem-solution approach, opening field for computer-implemented inventions Smart & Biggar | Intellectual Property - Canada Y. Artemis Lai Intellectual Property Current problem-solution approachChoueifaty rejects problem-solution approachCIPO must employ proper purposive claims construction testFuture implicationsIn 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.Current problem-solution approachCIPO uses a problem-solution approach for determining the essential elements of patent claims. This approach involves:identifying a problem disclosed by a patent application; andconstruing 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 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.Choueifaty rejects problem-solution approachIn 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".CIPO must employ proper purposive claims construction testThe 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:Would it be obvious to a skilled reader that varying a particular element would not affect the way in which the invention works? If modifying or substituting the element changes the way in which the invention works, then that element is essential.Considering the express language of the claim, or inferred from it, did the inventor intend for the element to be essential? If so, then it is an essential element.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.Future implicationsCIPO 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:reinstating applications abandoned due to subject-matter eligibility rejections. Applications can generally be reinstated within 12 months of the date of abandonment; andappealing 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 further information on this topic please contact Y Artemis Lai at Smart & Biggar by telephone (+1 604 682 7780) or email ([email protected]). The Smart & Biggar website can be accessed at www.smart-biggar.ca.