CIPO issues new guidance for patent applicants in light of Federal Court ruling

The Federal Court’s recent decision in Choueifaty v. Canada (Attorney General) 2020 FC 837 has brought attention to issues with the Canadian Intellectual Property Office’s (CIPO) “problem-solution” approach in assessing whether patent applications for computer or medical products are in fact “inventions” and therefore patentable.

Intellectual property partner Edward Fan spoke to The Laywer’s Daily about this case and noted that the “problem-solution” approach has caused difficulty for those filing for patents over the last decade.

“If you were a patent applicant in the last decade, you would have been subject to a really stringent but incorrect examination standard that affected the viability of potentially meritorious applications,” Edward said.

“Choueifaty is a clear rebuke of patent office practice in this regard.”

Edward added that although the CIPO has since issued new guidance which recommends examiners do not use the “problem-solution” approach, patent applicants may still run into issues.

“The current document introduces a new problem-solution analysis in requiring the identification of an ‘actual invention’ even after the essential elements of the claim have been purposively construed,” he said.

“So, applicants may continue to face challenges in pursuing computer-implemented, medical diagnostic and medical use inventions.”

Edward also said that although applicants will still face challenges, the new guidance “is a step in the right direction”.

“What the court has done is set the stage for every applicant to challenge the guidance and move it toward the standard that the courts envisioned.”

For further information on the long-term impact of the court’s decision, read our bulletin: “The Canadian Patent Office’s new guidance after Choueifaty: Out with the old (problem) and in with the new (problem)”.