Kicking The Habit: The Federal Court Of Canada Nixes The "Problem-Solution" Approach ' Again

• Published date: 19 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: McMillan LLP
• Author: Mr Pablo Tseng, Tilaye Terrefe and ZiJian Yang

In Benjamin Moore & Co. v The Attorney General of Canada, 2022 FC 923 ("Moore"), the Federal Court of Canada (the "Court") once again reiterated that the "problem-solution" approach used by the Canadian Intellectual Property Office ("CIPO") is not the proper approach to claims construction or for determining patentable subject matter.

Background:

In 2020, the Court in Choueifaty v Attorney General of Canada, 2020 FC 837 ("Choueifaty") definitively held that the "problem-solution" approach used by CIPO to construe patent claims was inconsistent with the purposive construction approach set out by the Supreme Court of Canada ("SCC") in Free World Trust v Électro Santé Inc., 2000 SCC 66 and Whirlpool Corp v Campo Inc., 2000 SCC 67. Our discussion regarding the Choueifaty decision can be found here.

Following Choueifaty, CIPO issued an updated practice notice titled "Patentable Subject-Matter under the Patent Act". This notice explicitly states, "the 'problem and solution' approach in the identification of essential elements during purposive construction should no longer be applied".¹

The Moore Applications:

Moore filed two patent applications (the "Moore Applications") related to Moore's "Color Selection System", which is described as "a computer implemented colour selection method that uses experimentally derived relationships for colour harmony and colour emotion".² Both applications were rejected by the patent examiner on the assertion that neither application qualified as an invention under '2 of the Patent Act.³

The Patent Appeal Board reviewed the applications and recommended that the Commissioner reject them. Despite the Choueifaty decision, the Board nevertheless relied on an approach set out in then current s. 13.05.01 (now s. 12.02.01) of CIPO's Manual of Patent Office Practice, which stated:

Once the context is determined the examiner will:

Identify the problem addressed by the application and its solution as contemplated by the inventor [see 13.05.02b]; and

Determine the meaning of the terms used in the claim and identify the elements of the claim that are essential to solve the identified problem.⁴

The Patent Appeal Board's recommendation was based on this "problem-solution" approach. The Commissioner followed the recommendation and ultimately concluded that "since there was no computer problem to be solved, the computer and associated components were not part of the solution".⁵

Appeal to the Court

Moore appealed the Patent Appeal Board's...