YVES CHOUEIFATY V. CANADA (ATTORNEY GENERAL), 2020 FC 837

On the basis of section 2 of the Canadian Patents Act describing ‘invention’, to determine the validity of the patents invention tests based on ‘Problem-Solving’ and ‘Purposive Claims Construction’ approaches evaluated.

This case revolves around the patentability of ‘software technology’. The essential test used by the Canadian Intellectual Property Office (CIPO) to determine the patentability of the claim was based on the method of ‘Problem-Solution’ test used originally by the examiner which does not emphasize the need to recognize the word ‘invention’ as described in Section 2 of the Patents Act, it rather focuses on two important points which mentions the essentials of elements. The first point says that the elements to recognize the essential claims of the problem must be first identified in accordance with the disclosed problem and the second elaborates that in order to fulfill the essential elements the first step is to determine the problem and then the solution purposed to it.

But appellant emphasized through the recognitions submitted in front of the Patent Board of Appeal that to determine the patentability of her 393 Application the test used by the Canadian examiner was not purposeful and ‘Purposive Claims Construction’ was the appropriate test wherein her invention can be described as “the computer-based anti-benchmark portfolio” should have surpassed the necessary definition of the word invention. The examiner of patents in successfully citing the cases of Whirlpool and Free World Trust did not arrive at a conclusion that the invention of appellant is in accordance with the definition of Section 2 of the Patents Act.

Based on the subject matter and the above contentions the appellant’s invention was declared by the examiner as outside the scope of categories of invention. In appeal against this decision, the Federal Court observed that the approach used by the examiner failed to recognize the issue of the inventor’s invention as laid down in Whirlpool and Free World Trust. In view of the court, the Commissioner failed to interpret the case of Whirlpool which suggested the essential elements of the claimed invention by using the problem-solution approach. The examiner’s job was to determine the validity of the said invention rather than establishing the fact that the invention is purposed to the test of the ‘Problem-Solving’ technique. In the case of Free World Trust where the ‘substance of the invention’ is not given due regard by the Supreme Court of Canada that is similar to the claim of construction approach used by the ‘Problem-Solving’ technique. In light of the court’s findings, the appellant also urged the court to include her invention and declare a fresh patent application to disclose it as an ‘invention’ but the court refused and ordered the Commissioner of Patents to start with the fresh assessment of the patent application.