Throwback Thursday: Software Patents and Choueifaty v. Canada

Supreme Court of Canada Building
Canada’s Supreme Court Building, which also houses the Federal Court.
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Look for Brion Raffoul’s Throwback Thursday posts, where we revisit posts and cases of interest!

Last September, we reported on the Canadian Federal Court case Choueifaty v Canada (2020 FC 837). In that case, the Court rejected the “problem-solution approach” used by the Canadian Intellectual Property Office (CIPO) to assess questions of patentable subject matter. Justice Zinn sent the case back to CIPO’s Patent Appeal Board (PAB), to be reconsidered according to the purposive construction approach set out in case law.

In January, the PAB issued its decision, in which they concluded that certain claims of the Choueifaty application comprised patentable subject matter within the meaning of Section 2 of the Patent Act. This is great news for applicants with software-based inventions: the patentable claims cover steps of computer-implemented methods. The PAB concluded that the invention claimed was not simply an abstract idea but an invention that included steps which:

“permitt[ed] the optimization to be performed with significantly less processing and greater speed… Accordingly, this can be considered an algorithm that improves the functioning of the computer used to run it… [and] the computer and the algorithm together form a single actual invention that has physicality and solves a problem related to the manual or productive arts.

Choueifaty (Re), 2021 CACP#3, Commissioner’s Decision #1556, para. 34 (emphasis added)

Also noteworthy was the PAB’s characterization of the essential elements of the claims. As we noted in September, the problem-solution approach used by CIPO permitted Examiners to consider elements non-essential if those elements did not (in the Examiner’s judgment) “solve the identified problem”. However, the PAB’s January decision, following the Federal Court’s direction, bases its determination of essential elements on the inventor’s intention, and concludes:

There is no claim language indicating any of the elements to be optional, preferred embodiments or one of a list of alternatives. Nor is there any indication in the record before us that would lead to a determination of any claimed elements being non-essential. We therefore presume all the claimed elements to be essential.

Choueifaty (Re), 2021 CACP#3, Commissioner’s Decision #1556, para. 28 (emphasis added)

This decision is a promising step towards smooth prosecution for software patents in Canada, and a reassuring sign for applicants in many of today’s high-tech fields! For more information, please contact one of our experts at Brion Raffoul LLP.


Read our original post below:

On August 21, 2020, the Canadian Federal Court rejected the problem-solution approach adopted by the Canadian Intellectual Property Office (CIPO) for assessing patentable subject matter under the Patent Act.  The problem-solution approach has long been the standard used by CIPO to determine whether a claim element is “essential” to the invention for the purposes of claim construction.  As set out in Chapter 12 of the Manual of Patent Office Procedure (MOPOP), purposive construction requires the Commissioner to:

  • use a fair, balanced and informed approach;
  • identify the person skilled in the art;
  • identify the common general knowledge;
  • identify the problem and solution; and
  • determine which elements of the claim solve the identified problem.

That is, according to MOPOP, only elements of the claim that solve the identified problem are “essential elements”.  Under this approach, claim elements that do not solve the identified problem are not essential to the claim, regardless of whether they (a) have a material effect on the operation of a given embodiment; (b) are found in the prior art or are novel and non-obvious; and/or (c) transform non-patentable subject matter into subject matter that meets the definition of “invention” for the purpose of section 2 of the Patent Act.

This approach has long been considered questionable in light of case law, but had not been successfully challenged in court until recently.  In Choueifaty v Canada (2020 FC 837), Justice Zinn held that the problem-solution approach is incorrect and “akin to using the ‘substance of the invention’ approach discredited by the Supreme Court of Canada” (para. 37).  Rather, to determine whether a claim element is essential or inessential, the Commissioner must use the purposive construction approach set out by the Supreme Court in the seminal cases of Whirlpool and Free World Trust—and, in particular, the Commissioner must consider the inventor’s intention, something the problem-solution approach fails to do.

In his judgement, Justice Zinn reiterated the test from paragraph 55 of Free World Trust:

  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, considering 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.

Under this test, essential elements of a claim are not required to solve an identified problem.  Moreover, the inventor’s intention must be considered when construing the claims.  Although Choueifaty is likely to be appealed, its welcome clarifications may smooth the path to granting patents for computer implemented inventions (CIIs).


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