In recent years, the Canadian Intellectual Property Office (CIPO) has received criticism for its approach in claim construction, particularly in the context of assessing the patentability of computer-implemented inventions. CIPO’s approach has involved: (i) identifying a problem disclosed by a patent application; and (ii) construing the essential elements of a claim as those which are necessary to achieve a disclosed solution to an identified problem (i.e., the “problem-solution” approach). It has been especially difficult for patent applications involving computer-implemented inventions to overcome CIPO’s “problem-solution” approach, as CIPO examiners have generally deemed computer elements as non-essential, often resulting in the rejection of such inventions on grounds of ineligible subject matter.
On June 17, 2022, the Federal Court released its decision in Benjamin Moore & Co. v Canada (Attorney General), 2022 FC 923 (Benjamin Moore), directing CIPO on a new, proper framework for assessing patentable subject matter.
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