Patents
Appeal from Commissioner of Patents’ decision refusing appellant’s patent application no. 2635393 ('393 application) — Appellant founder of investment management firm — Claiming invention of computer implementation of new method for selecting, weighing investment portfolio assets that minimizes risk without impacting returns — Patent examiner rejecting '393 application on ground that subject matter of claims laying outside definition of “invention” provided in Patent Act, R.S.C., 1985, c. P-4 (Act), s. 2 — Panel of Board members agreeing with examiner’s findings — Commissioner concurring with Panel’s recommendation that claims on file not complying with Act, s. 2 as they did not disclose “invention” — Panel construing patent claims to determine essential elements using problem-solution approach set out in Canadian Intellectual Property Office’s (CIPO) Manual of Patent Office Practice (June 2015) (MOPOP) — In this approach, set out in 2015 MOPOP, s. 13.05.02c (now s. 12.02.02e), essential elements of claim are those necessary to achieve disclosed solution to identified problem — Panel finding that essential elements of appellant’s claims “directed to a scheme or rules involving mere calculations” for weighing securities — Finding no discernible physical effect to satisfy definition of “invention” — Appellant submitting, inter alia, that Commissioner erred in applying problem-solution approach when determining essential elements of claimed invention — Appellant also submitting that established test for determining essential elements set out by Supreme Court in Free World Trust v. Électro Santé Inc., 2000 SCC 66, [2000] 2 SCR 1024 (Free World Trust) — Whether Commissioner applying wrong test when construing claims — Commissioner erring in determining essential elements of claimed invention by using problem-solution approach — Evident on reading of MOPOP that Commissioner, notwithstanding stating that patent claims are to be construed in purposive manner, not intending or directing patent examiners to follow teachings of Free World Trust, Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 SCR 1067 (Whirlpool) — MOPOP distinguishing purposive construction in Whirlpool, Free World Trust from that to be used by patent examiners — Commissioner relying on Genencor International Inc. v. Canada (Commissioner of Patents), 2008 FC 608, [2009] 1 F.C.R. 361 (Genencor) for its holding that Whirlpool test not applicable to patent examiners — Genencor not binding on Court, no longer good law — Decided prior to Canada (Attorney General) v Amazon.com, Inc., 2011 FCA 328, [2012] 2 F.C.R. 459 (Amazon) — Federal Court of Appeal therein finding that Commissioner required to employ purposive construction test set out in Whirlpool, Free World Trust — This, in part, because job of Commissioner, like judge at trial, is to determine validity — Using problem-solution approach to claims construction akin to using “substance of the invention” approach discredited by Supreme Court in Free World Trust — Problem-solution approach to claims construction failing to respond to issue of inventor’s intention — Decision set aside — Appeal allowed.
Choueifaty v. Canada (Attorney General) (T-1404-19, 2020 FC 837, Zinn J., reasons for judgment dated August 21, 2020, 17 pp.)