by Lei Gao
For years, patent practitioners have struggled with the determination of essential elements by the patent office. Instead of the test for essential elements as laid out by the Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 (hereinafter "Free world"), the patent office takes a problem-solution approach that is not consistent with the teachings of Free world.
As a result of this approach, many computer-based inventions are deemed to be directed to unpatentable subject matter. The examiner often excludes many elements from being essential even though the applicants insist that such elements are essential, while the remaining essential elements are considered to be unpatentable subject matter, for example, abstract ideas or mental processes.
Similarly, measurement and detection steps in claims related to certain medical diagnostic methods are often excluded from the essential elements. The examiner then considers the remaining correlation steps to be directed to an unpatentable disembodied idea. This makes claims related to certain medical diagnostic methods to be considered as being directed to unpatentable subject matter, as elaborated in Practice Notice 2015-02.
On August 21, the Federal Court issued the decision in Choueifaty v Canada (Attorney General), 2020 FC 837, which is an appeal from the rejection by the patent office. The court found for Choueifaty and rejected the argument by the patent office that the problem-solution approach that the patent office took is consistent with Free world. The court stated in paragraph 31:
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 court also rejected the decision in Genencor International Inc v Canada (Commissioner of Patents), 2008 FC 608, on which the patent office relies for the proposition that the patent office is free to construe the claims in a manner that is not consistent with Free World.
In the end, the court remanded the case to the patent office for further determination consistent with this opinion.
This ruling affects all patent applications in which purposive construction is to b applied in the examination. In particular, it may help patent applications related to computer-based inventions and medical diagnostic methods because the elements that are previously excluded from being essential by the problem-solution approach may now be considered essential, potentially making it easier to argue that the claims are directed to patentable subject matter.
In the past, arguments to the patent office based on the test for essential elements as articulated in Free World are usually not persuasive to the examiners, who follow the Manual of Patent Office Practice (MOPOP) and the practice notices published by the patent office. This decision has the potential to make such arguments much more effective.
However, it remains to be seen how the patent office will respond to this decision. For example, it may take the patent office a long time to change the MOPOP while delaying examination in the meantime. The patent office may also appeal this decision.
In any case, this decision provides a strong basis for arguments based on the test in Free World, which will surely be included in many responses to the patent office.