Federal Court of Canada Rejects CIPO’s “Problem-Solution Approach” to Claim Construction

On August 21, 2020 in Choueifaty v Canada (Attorney General), 2020 FC 837, the Federal Court of Canada (the Court) considered an appeal from a decision of the Canadian Intellectual Property Office (CIPO) refusing a patent application as not being directed to patent-eligible subject matter.  The Court allowed the appeal, holding that CIPO did not construe the claims properly.

The patent application at issue claimed a computer implementation of a new method for selecting and weighing investment portfolio assets that minimizes risk without impacting returns.  The Patent Appeal Board (PAB) construed the claims using the problem-solution approach set out in CIPO’s Manual of Patent Office Practice (MOPOP).  In this approach, the essential elements of a claim were those that are necessary to achieve the disclosed solution to an identified problem.  The PAB found that the essential elements of the claims were “directed to a scheme or rules involving mere calculations” for weighing securities, and that there was no discernible physical effect to satisfy the definition of “invention.”  The computer was not considered to be an essential element in the claims.

The Court held that CIPO erred in using the problem-solution approach to construe claim, because this approach fails to respond to the intention of the inventor as to whether a claim element is intended to be essential, and therefore does not follow the Supreme Court of Canada’s teachings on claim construction.  The PAB’s decision to refuse the application was set aside, and CIPO was instructed to conduct a fresh assessment of the application.  This decision should have significant implications for subject-matter eligibility of computer-implemented inventions and diagnostic methods, where application of the problem-solution approach has often resulted in refusals of patent applications.

Summary By: Vanessa Komarnicki