Introduction
On 11 January 2021 – in an apparent conclusion to the patent at the heart of the Federal Court s decision in
Yves Choueifaty v Attorney General of Canada (2020 FC 837) – the commissioner of patents allowed Canadian Patent Application 2635393 (CA 393) in Commissioner s Decision 1556 (CD1556) (2021 CACP 3).
CD1556 provides insight into how the Canadian Intellectual Property Office (CIPO) will:
approach patentable subject matter in future; and
apply the new guidelines on patentable subject matter released in response to
Choueifaty (see below).
The Federal Court rejected CIPO s problem-solution approach for determining patentable subject matter in
Choueifaty (for further details please see Federal Court rejects problem-solution approach, opening field for computer-implemented inventions ). The Federal Court found that this previous approach disregarded the intention of the inventor contrary to the purposive claims construction required by the Supreme Court o
Canmar
5 was a
trend for a day or here to stay. This year, the Federal Court has
seen increased attempts by litigants to resolve matters more
expeditiously by way of dispositive motions. Summary judgment was
granted in three cases
6 and two
motions for default judgment were brought but dismissed based on
insufficient evidence.
ViiV Healthcare Company v. Gilead Sciences
Canada,
8 the Court held that
completion of discoveries is not a precondition to summary trial
such that resolution may be sought at very early stages of the
proceeding.
We saw the Federal Court grant summary disposition to (a)
dispose of claim construction argument,
As we previously reported, the Federal Court in
Yves Choueifaty v Attorney General of
Canada, 2020 FC 837 (Choueifaty) granted the appeal from
the Commissioner of Patents (the Commissioner) decision that
Canadian Patent Application No. 2,635,393 (the 393 Application) was
not patentable subject-matter.
On January 11, 2021, the Patent Appeal Board (the Panel)
reconsidered the 393 Application and found that the Second Proposed
Claims, which had been considered by the Court in Choueifaty, were
patentable subject-matter that complied with section 2 of the
Patent Act. The Commissioner agreed with the Panel s
recommendation in
Choueifaty (Re), 2021 CACP 3. This
decision should provide insight to patent applicants regarding how
the Commissioner will apply the Canadian Intellectual Property