Choueifaty v. Canada (Attorney General), 2020 FC 837

Justice Zinn - 2020-08-21

Read full decision. Summary prepared by Alan Macek:

This is an appeal from a decision of the Commissioner of Patents refusing Mr. Choueifaty’s patent application on the ground that the essential elements of the claimed patent fall outside the definition of ‘invention’ in section 2 of the Patent Act [see CD1478]. ... It is evident on a reading of the MOPOP that the Commissioner, notwithstanding stating that the patent claims are to be construed in a purposive manner, does not intend or direct patent examiners to follow the teachings of Free World Trust and Whirlpool. ... The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada in Free World Trust at para 46. ... For these reasons, I find that the Commissioner erred in determining the essential elements of the claimed invention by using the problem-solution approach, rather than the approach Whirlpool directs be used. ... The decision will be set aside with instructions to the Commissioner to do a fresh assessment of the 393 Application based on the Second Proposed Claims, and in accordance with these reasons.

Decision relates to:



Canadian Intellectual Property