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Software inventions get huge boost from Federal Court of Canada

August 26, 2020

The Federal Court of Canada just delivered a stinging rebuke to the Canadian Intellectual Property Office (CIPO) for its handling of patentable subject matter rejections in Choueifaty v. Attorney General of Canada, 2020 FC 837.

The past year or two has seen the Canadian Patent Appeal Board (PAB) reject almost every computer-related invention that has come before it for lack of patentable subject matter. In doing so, the PAB has been relying on a framework for construing claims that is set out in the 2015 Manual of Patent Office Practice (MOPOP) that mirrors two 2013 practice notices in which the Office established its preferred approach. The “purposive construction” of claims taught in MOPOP pays lip service to the guidance given by the Supreme Court of Canada in Whirlpool and Free World Trust, but goes on to say they will use a different process because examination is different than litigation. The MOPOP framework employs a problem-solution analysis to identify the “invention” and then reads out any claim limitations that are not deemed essential to the solution. The Examining division has picked up on that approach and now regularly dismisses any recited computer or network elements in claims as “mere context” or an “operating environment”. Because the patentability of computer-implemented inventions typically turns on whether some physical element recited in the claims, such as a computer, is deemed “essential”, this approach has resulted in CIPO refusing many applications in which an inventor clearly intended the invention to be implemented on a computer.

Justice Zinn opens his analysis in Choueifaty by noting: “[i]t 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.”

With respect to the Office’s argument in reliance on Genencor v. Canada (Commissioner of Patents) that claim construction in examination is different than in the courts, Justice Zinn says, “Genencor is not binding on me, and in my view, is no longer good law.”

The problem-solution approach adopted by the Office is equated to the “substance of the invention” approach that was clearly rejected by the Supreme Court of Canada. That test only asks what a skilled person in the art would understand to be non-essential in the claim; but the purposive construction test from Whirlpool mandates that the construction also assess what the inventor intends to be essential. Justice Zinn finds that, by ignoring inventor intention, the Commissioner failed to purposively construe the claims correctly.

The court’s elevation of “inventor intention” as a key element of purposive construction is going to make it much easier to ensure that physical elements are found to be essential parts of a claim, and should make it significantly more difficult for the Office to reject claims as being directed to non-statutory subject matter.

We can expect that an appeal is probably forthcoming and that numerous applicants that have received unfavorable Patent Appeal Board decisions in recent months may have a renewed interest in an appeal.