This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 4: Software and Digital Technology Patents
Federal Court of Canada [2020]: Choueifaty v Canada (Attorney General), 2020 FC 837
Date of judgment: August 21, 2020
Issuing authority: Federal Court
Level of the issuing authority: First Instance (appeal from decision of Commissioner of Patents)
Type of procedure: Judicial (Administrative)
Subject matter: Patents (Inventions)
Plaintiff/Appellant: Yves Choueifaty
Defendant/Respondent: Attorney General of Canada
Keywords: Patentable subject-matter; Computer-implemented invention; Meaning of invention; Claim construction
Basic facts: This was an appeal of a decision of the Commissioner of Patents (“Commissioner”) that refused to grant a patent for a “computer-implemented method for providing an anti-benchmark portfolio”. The Commissioner found the subject-matter claimed did not fall within the definition of an “invention” in section 2 of the Patent Act.
In construing the patent claims to determine their essential elements, the Commissioner endorsed a problem-solution approach set out in the Canadian Intellectual Property Office’s guidelines for patent examiners, Manual of Patent Office Practice (MOPOP, June 2015). Under this approach, the essential elements of the claims were those determined to be necessary to achieve the disclosed solution to the identified problem.
Applying this approach to the claims of the patent at issue, the essential elements of the first claim set were identified as being “directed to a scheme or rules involving mere calculations for weighing securities” such that no discernible physical effect was found to satisfy the definition of “invention”, and the second claim set were identified as reflecting an “optimization procedure” rather than a computer implementation that improved processing speed.
The dispositive issue before the FC was whether the Commissioner erred in applying the problem-solution approach when determining the essential elements of the claims.
Held: The Court held that problem-solution approach to claims construction was erroneous and was akin to using the “substance of the invention” approach that had been discredited by the Supreme Court of Canada in Free World Trust, 2000 SCC 66. The MOPOP did not properly direct the patent examiner to the right test.
Relevant holdings in relation to software and digital technology patents: The Supreme Court of Canada in Free World Trust and in Whirlpool Corp v Camco Inc., 2000 SCC 67 required two questions to be answered to determine the essential elements of the claims:
1. Would it be obvious to a skilled reader that varying a particular element would not effect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.
2. Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.
For a claim element to be non-essential, it must be shown that both: (i) on a purposive construction of the words of the claim it was clearly not intended to be essential; and (ii) that at the date of publication of the patent, the skilled addresses would have appreciated that a particular element could be substituted without affecting the working of the invention.
Relevant legislation: Sections 2 and 27(8) of the Patent Act (CA261)