Intellectual Property

The Patent Law Treaty

Canada is modernizing its patent regime to implement the Patent Law Treaty, and the new Patent Rules came into force on October 30, 2019. As set out in a news release by the Canadian Intellectual Property Office:

“The Canadian Intellectual Property Office is pleased to announce that the new Patent Rules were published today in the Canada Gazette, Part II. The amendments to the Patent Act and the new Patent Rules will come into force on October 30, 2019. This updated legislative regime will permit Canada to implement the Patent Law Treaty.

“The Patent Law Treaty harmonizes and streamlines patent administrative procedures among national intellectual property (IP) offices and delivers key benefits for businesses:

  • More efficient process to secure a filing date
  • Harmonized administrative procedures and formalities
  • Modernized patent legislative framework

“We are especially proud to have acceded to the last of five international IP treaties. In addition to the Patent Law Treaty, Canada joined four other IP treaties administered by the World Intellectual Property Organization over the past year: the Madrid Protocol, the Singapore Treaty and the Nice Agreement for trademarks on June 17, 2019, as well as the Hague Agreement for industrial designs on November 5, 2018.

“The collaboration and input of our stakeholders have been critical to the implementation of this treaty. Thank you to those who provided time and expertise throughout the consultation process.

“Joining these treaties helps Canadian businesses looking to enter or expand their presence in international markets and supports Canada’s IP Strategy and its goal to help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access IP.”

The Purposive Test and Patent Claims

As reported in Canadian Lawyer, a recent Federal Court decision has clarified the proper approach for how the Commissioner of Patents should construe the essential claims of patent applications.1

Choueifaty v. Canada (Attorney General) involved a patent application initially filed in 2008 comprising 27 claims for an invention that was a “computer implementation of a new method for selecting and weighing investment portfolio assets that minimizes risk without impacting returns,” as described by Justice Zinn of the Federal Court. In 2016, the appellant amended these 27 claims following the patent examiner’s rejection of his initial application. A panel of the Patent Appeal Board members agreed with the patent examiner’s findings upon a preliminary review of the application. In 2018, the appellant submitted a set of 63 proposed claims.

The Commissioner of Patents declined to grant the application on the basis that the claimed patent fell outside the definition of “invention” under section 2 of the Patent Act. The patent commissioner used the problem-solution approach under section 13.05.02c of the Canadian Intellectual Property Office’s June 2015 Manual of Patent Office Practice.

The Federal Court, ruling in favor of the appellant, found that the patent commissioner had failed to apply the proper test when construing the essential claims of the patent application. Pursuant to section 13.05 of the June 2015 Manual of Patent Office Practice, patent claims should be construed in the purposive manner taught in the Supreme Court cases of Free World Trust v. Électro Santé Inc. and Whirlpool Corp. v. Camco Inc.

However, footnote 126, attached to the second paragraph of section 13.05 of the Manual, clarified how the purposive construction to be used by patent examiners is different from how purposive construction was used in Free World Trust and Whirlpool. Footnote 126 stated that patent examiners should use purposive construction in objectively determining “what the person skilled in the art would, as of the date of publication of the patent application and on the basis of the particular words or phrases used in the claim, have understood the applicant to have intended to be the scope of protection sought for the disclosed invention.”

Zinn said that, while Whirlpool involved an impeachment proceeding and not a re-examination proceeding, the subsequent Federal Court of Appeal ruling in Canada (Attorney General) v., Inc. stated that the patent commissioner should apply the purposive construction test in Whirlpool and Free World Trust. Amazon, like the present case, also involved the patent commissioner’s refusal to grant a patent.

For these reasons, the court set aside the Patent Commissioner’s decision and instructed them to again assess the application based on the claims submitted in 2018, using the correct approach
this time.

In a bulletin on the decision, Borden Ladner Gervais LLP wrote that “if the decision stands, it should result in CIPO realigning its practices with long-settled law on claims construction, resolving confusion and controversy dating back more than a decade.”2

  1. Carolino, Bernise. “Purposive test applies to construction of patent claims: Federal Court.” Canadian Lawyer. September 8, 2020.
  2. Boocock, Graeme, and Scott Dybwad. “Federal Court of Canada Corrects CIPO on Claims Construction.” Borden Ladner Gervais LLP (BLG). August 28, 2020.



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