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Federal Court Clarifies Standard for Claims Construction to be Applied by CIPO

The Federal Court of Canada recently ruled in Choueifaty v. Canada (Attorney General) that the Canadian Intellectual Property Office’s (CIPO’s) practice of using a problem-solution approach in patent claims construction was out of line with the jurisprudence established by the Supreme Court of Canada (see Free World Trust and Whirlpool).

The Free World Trust and Whirlpool decisions emphasize that patent claims should be construed in a purposive manner with regard to the intent of the inventor. However, the CIPO had instead adopted a “problem-solution” approach which effectively instructed patent examiners to ignore conventional claim elements which were not part of the solution to an identified problem. This particularly led to problems in computer-implemented inventions, as computer-related claims were often stripped down to an abstract idea (which does not form the basis for patentable subject matter in Canada) after the removal of known computing components.

With the Choueifaty decision, the Federal Court instructs the CIPO to abandon its problem-solution approach and to realign its practices with a purposive approach to claims construction. This decision provides hope that the process for obtaining patents for computer-implemented inventions in Canada will be smoother in the future.

A copy of the decision in Choueifaty v. Canada (Attorney General), 2020 FC 837, is available here

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