Canadian Lawyer

October 2020

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54 LEGAL REPORT INTELLECTUAL PROPERTY com, Inc. required the office to employ the purposive construction test set out in Whirlpool and Free World Trust. Horbal says that, although the ruling in Choueifaty has implications in all cases where purposive construction is to be used during patent examination, it has particular impor- tance with respect to the question of patent- able subject matter. In computer-related cases, patent exam- iners will often characterize the alleged "problem" in such a manner that any computer elements in a patent claim are non-essential and can be disregarded. Once the computer elements are disregarded, what remains is easily classified as an abstract idea or mere scheme and, thus, the entire inven- tion is excluded from patentability. Cited by the Supreme Court of Canada Available risk-free for 45 days Online: Call Toll-Free: +1 800 387 5164 In Toronto: 416 609 3800 Print + ProView eBook* Order # 30846731 $642 2 volume looseleaf supplemented book + eBook* Anticipated upkeep cost – $480 per supplement 4-6 supplements per year Supplements invoiced separately Print only Order # 30842908 $642 ProView eBook* only Order # 30912733 $584 Prices include shipping and handling. Price(s) subject to change without notice and subject to applicable taxes. Canadian Employment Law Stacey Reginald Ball "The most comprehensive text on em- ployment law in Canada. It is carefully constructed and accurate." Canadian Bar Review More than 7,000 cases cited Canadian Employment Law is a one-stop reference that provides a thorough survey of the law and analysis of developing trends, suggesting potential avenues of attack as well as identifying potential weaknesses in the law. With methodically organized chapters covering the complete range of employment law, this book provides the kind of detailed examination of the facts you can count on. The work includes a Table of Reasonable Notice – a chart that groups together comparable types of positions so you can easily compare length of notice awards. All topics are illustrated with extensive case law and useful footnotes. Choose eBook, Print, or both Experience the freedom and flexibility to work wherever and whenever you want, with or without an internet connection, with Thomson Reuters ProView®, the premier eBook experience for professionals worldwide. *eBook not available to trade bookstores, third-party distributors, and academic institutions. © 2020 Thomson Reuters Canada Limited TR1046942-NM Also available online on WestlawNext® Canada EmploymentSource™ judging the essential elements of the claim and finding that the problem and the solution did not include a computer element. But Zinn found that the office erred in determining the essential elements of the claimed invention by applying the prob- lem-solution approach, an approach that does not consider the inventor's intention. It also noted that patent examiners were not being guided to follow the teach- ings of the Free World Trust or Whirlpool cases. While CIPO took the position that the Whirlpool decision doesn't apply to patent examinations, only litigation, based on Genencor International Inc. v. Canada (Commissioner of Patents), the Federal Court in Choueifaty said the Court's 2011 decision in Canada (Attorney General) v. Amazon. used the problem-solution approach, and it found the problem was not one of computer implementation but rather of reducing vola- tility in an investor's portfolio. The solution was the construction of an anti-benchmark portfolio, where the weighting of each security within the portfolio is calculated according to an anti-benchmark ratio in such a way that the portfolio maximizes diversification. Using this analysis, the panel concluded that the essential elements did not include the computer-related details but rather are directed to rules involving calculations to construct the anti-benchmark portfolio, which are not patentable subject matter. The case was then appealed by the appli- cant, who asserted that the patent office erred by using the problem-solution approach to

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