Canadian Lawyer

October 2020

The most widely read magazine for Canadian lawyers

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52 www.canadianlawyermag.com LEGAL REPORT IN A world of startups and innovation, Canadian companies are used to uncertainty — whether it's getting the money they need to grow, wondering if the technology they are developing stands the tests of science and the marketplace or even securing a patent that will allow them to own the inventions they create. However, on that last uncertainty at least, based on a recent Federal Court ruling, Yves Choueifaty v. Attorney General of Canada, innovators may be able to breathe a little easier, as the court has ordered the Canadian Intellectual Property Office to go back and review a decision it made to deny a patent on the basis of the "problem-solution" approach it has been using. Instead, the Federal Court has directed CIPO to employ the "purposive construc- tion" approach that was outlined almost 20 years ago by the Supreme Court of Canada in Free World Trust v. Électro Santé Inc. and INTELLECTUAL PROPERTY Solving the 'problem- solution' problem for patent applicants A recent Federal Court decision that orders the Canadian IP office to review assessment methods on patentable subject matter is a win for inventors, writes Zena Olijnyk Whirlpool Corp. v. Camco Inc. Canadian IP lawyers are saying that, absent a successful appeal of the Choueifaty deci- sion, a significant roadblock will be removed for those seeking patent protection, especially in the areas of computer-based and medical diagnostic inventions. "It will open doors to a lot more patenting in these areas if the court's decision stands," says Paul Horbal, a partner at Bereskin & Parr LLP, adding that having a clear approach to the issue "that is supported by case law is a good thing." However, he thinks there is a chance the decision could be appealed, as it would be "consistent with the office's past approach to patentable subject matter." In a blog post following the release of the ruling, the lawyers who acted on behalf of the applicant — J. Bradley White, Nathaniel Lipkus, Geoffrey Langen of Osler Hoskin & Harcourt LLP — wrote that Choueifaty "It will open doors to a lot more patenting in these areas if the court's decision stands." Paul Horbal, Bereskin & Parr CIPO PATENTS GRANTED Percentage of applications granted: 57.7% (22,495 of 38,968) April 1, 2015 - March 31, 2016 72% (26,962 of 37 297) April 1, 2016 - March 31, 2017 66.55% (24,370 of 36,618) April 1, 2017 - March 31, 2018 59% (23,094 of 39,027) April 1, 2018 - March 31, 2019 55% (19,353 of 34,815) April 1, 2019 -March 31, 2020 Source: Statistics Canada

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