Problem-Solution Approach to Patent Claim Construction Soundly Rejected by Federal Court
In recent years, it has been extremely difficult to obtain patent protection in Canada for business methods and other computer-implemented inventions. In 2013, the Canadian Patent Office adopted a policy which allowed examiners to ignore computer elements recited in the claims, and thereby reject the claims as being directed to disembodied ideas or sets of rules.
In particular, CIPO policy focused on a “problem-solution” approach, whereby (1) a problem was identified (typically based on the background section of the patent application) and (2) only those claim elements deemed to be part of the solution to the problem were considered essential. In many cases, computer elements were said to be present “merely for convenience” and alleged to be substitutable by non-computer elements such as pen and paper. Because of this, many novel and inventive business methods were rejected as being otherwise non-patentable.
The Federal Court of Canada in Choueifaty v Attorney General of Canada 2020 FC 837 has now found that the problem-solution approach is improper. More specifically, the Court found that the Commissioner of Patents failed to follow the teachings of Free World Trust v Électro Santé Inc, 2000 SCC 66 and Whirlpool Corp v Camco Inc, 2000 SCC 67, the two leading Canadian cases on claim construction.
Rather than the problem-solution approach, Zinn J. indicated at paragraph [39] of Choueifaty that:
in order “to establish that a claim element is non-essential, it must show both (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, and (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention” [emphasis in original]. The problem-solution approach to claims construction focuses only on the second aspect above, it fails to respond, as taught in Whirlpool, to the issue of the inventor’s intention. Regarding the inventor’s intention, para 51 of Whirlpool states:
“The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims.” [emphasis added]
The Choueifaty decision is appealable by the Attorney General until September 21st, 2020.
Practically speaking, the Federal Court’s explicit rejection of CIPO’s problem-solution approach should make it more difficult for CIPO to reject claims directed to computer-implemented inventions solely on the grounds of lacking patentable subject matter. If you have any pending applications which have been rejected under this policy, or if you are considering filing an application directed to a computer-implemented invention, please contact a member of our team.