More Problem Than Solution? Patent Subject-Matter Eligibility Following Choueifaty and CIPO’s 2020 Practice Notice

Abstract:

The Canadian Intellectual Property Office’s (CIPO’s) use of a problem-solution approach unfairly denied patents to inventors of business methods, diagnostic methods, and computer-implemented inventions by failing to consider the inventor’s intentions when determining the essential elements of the invention. With important and practical elements excluded from consideration, the remaining elements were left vulnerable to being found patent-ineligible “abstract” subject matter. In Choueifaty, the Federal Court reiterated the Supreme Court of Canada’s holding in Free World Trust that an element is essential if the inventor intends it to be. Following Choueifaty, CIPO issued an updated practice notice. This article argues that CIPO has incorporated its previous error into its updated practice notice by recycling the problem-solution approach and establishing a physicality requirement. Thus, despite Choueifaty, patent applications that describe atypical, non-physical subject matter are nonetheless likely to experience the same fate as under the previous regime.