Canadian Lawyer

October 2020

The most widely read magazine for Canadian lawyers

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www.canadianlawyermag.com 53 is "an important decision that should help provide clarity on the correct approach to claim construction when a patent applica- tion is being prosecuted before the Canadian Intellectual Property Office, particularly where the claims are being assessed for subject-matter eligibility. "The Court's approach ensures that the inventor's intention as set out in the claims will be considered when determining the essential elements." Federal Court Justice Russel Zinn said in the Choueifaty decision that "the prob- lem-solution approach to claims construction is akin to using [an] approach discredited by the Supreme Court of Canada." He emphasized that the correct approach for construing claims is to apply a purposive construction approach that had been stipu- lated by the Supreme Court of Canada in its decisions in 2000. A claim must be construed based on the inventor's purpose, and the essentiality of a claim element is to be deter- mined by asking the following questions: 1. Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential. 2. Is it the intention of the inventor, consid- ering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element. The Federal Court emphasized that both questions must be satisfied when assessing essentiality. The "problem-solution" approach used by CIPO only considered whether one of ordinary skill in the art would understand that a particular claim element could be varied or removed without affecting the way the inven- tion works and disregarded the intention of the inventor. To do so was improper and akin to using the "substance of the invention" approach rejected by the Supreme Court of Canada in the Free World Trust case. Based on the approach used by CIPO, many patent applications have been refused and finally rejected. Between January 2016 and August 2020, 70 patent applications were referred to the Patent Appeal Board for reconsideration after being rejected under the problem-solution analysis. In all 70 cases, the claims were refused. The particulars of the Choueifaty decision relates to the invention of using a computer for selecting and managing investment port- folios. It was rejected by CIPO on the basis that it was outside the definition of "inven- tion." It next went to a panel review, which

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