Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 29 AUGUST 2020

No Solution? No Problem! The Federal Court Of Canada Puts A Dagger In The "Problem-Solution" Approach To Patent Claims Construction

McMillan LLP
McMillan LLP
Contributor
McMillan LLP

McMillan LLP

The firm : McMillan LLP is one of Canada’s leading national law firms with offices in Montreal,...

View firm profile
Explore more from McMillan LLP

The Federal Court of Canada's decision in Choueifaty v Attorney General of Canada, 2020 FC 837 ("Choueifaty") will undoubtedly be one of 2020's top patent cases in Canada.

CanadaIntellectual Property
Pablo Tseng
Pablo Tseng
Tilaye Terrefe
Tilaye Terrefe
Keith Bird
Keith Bird
Author LinkedIn connections

The Federal Court of Canada's decision in Choueifaty v Attorney General of Canada, 1 ("Choueifaty") will undoubtedly be one of 2020's top patent cases in Canada. But this decision will not be known for creating new law. Rather, this decision will be known for the Federal Court's dressing down of the Canadian Intellectual Property Office's internally developed approach to how the Office's patent examiners construe patent claims. This bulletin will be of interest to patent practitioners and patent applicants.

Background

The test for determining the essential elements of a patent claim is set out in the 2000 Supreme Court of Canada decisions of Free World Trust2 and Whirlpool.3 As aptly summarized in the subsequent 2006 Federal Court of Appeal decision of Halford:4

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2025

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

Patenting Innovation In Data Centres: Protecting Configurations, Cooling Technologies, And The Green Advantage

The rapid expansion of data centre infrastructure has made these facilities a focal point for technological innovation and intellectual property investment. From server configurations to advanced cooling systems, the technologies deployed inside data centres represent significant R&D expenditure and competitive advantages. Patent protection offers operators and developers opportunities to safeguard innovations...
GlobalIntellectual Property
Gowling WLG
Gowling WLG
Article

Trademark Owner Who Failed To File Evidence In Expungement Proceeding Has Registration Reinstated On Appeal

Trademark owners facing expungement for failing to file evidence of use in section 45 proceedings may have recourse through the Federal Court appeal process. The recent Lion Corporation case demonstrates how administrative errors by trademark agents can be remedied, allowing registrants to file additional evidence and potentially reinstate their registrations when the failure was beyond their control.
CanadaIntellectual Property
Oyen Wiggs Green & Mutala
Oyen Wiggs Green & Mutala
Article

Fast-Tracking Your Patent Application In Canada: CIPO Expands The Key Technology Expedited Program

For Canadian innovators, the patenting process can seem unreasonably slow. In an effort to address this, the Canadian Intellectual Property Office (CIPO) created various procedures to expedite the examination process in Canada. Knowing which fast track options exist, when they make sense, and how to use them effectively can provide a significant commercial advantage.
CanadaIntellectual Property
Cassels
Cassels
Article

CIPO Issues Practice Notice On Redacting Postal Addresses And Removing Unrelated Documents From TDRS

The Canadian Intellectual Property Office has issued new guidance on when trademark applicants can redact postal addresses or remove documents from public records. Understanding these strict requirements and exceptional circumstances is crucial for protecting privacy while maintaining compliance with Canada's trademark registration transparency obligations.
CanadaIntellectual Property
Oyen Wiggs Green & Mutala
Oyen Wiggs Green & Mutala
Article

Powering Up: Grid Access, Strategic Screening And Canada’s Emerging Data Centre Regimes

Canada is rapidly becoming a key destination for data centre investment, fueled by artificial intelligence and cloud computing growth. However, this expansion places unprecedented demands on electricity grids, water resources, and local communities. As federal and provincial governments introduce new frameworks to manage these resource challenges, developers and investors must navigate an increasingly complex landscape where power strategy...
CanadaEnergy and Natural Resources
McMillan LLP
McMillan LLP
Article

Cleared For Investment: Canada Opens The Door To Private Capital At Its Largest Airports

Prime Minister Mark Carney has announced plans to seek private investment through long-term concessions to operate Canada's four largest airports: Toronto Pearson, Vancouver, Montréal-Trudeau and Calgary. While the government would retain ownership of underlying land and assets, this represents a fundamental shift from the current not-for-profit airport authority model that has governed these facilities since the 1990s.
CanadaTransport
McMillan LLP
McMillan LLP
Article

Building Momentum: Canada Advances Major Projects Under The Building Canada Act

The federal government has published notices proposing to add the Mackenzie Valley Highway and Roberts Bank Terminal 2 to Schedule 1 of the Building Canada Act as projects of national interest. These potential listings, following a similar notice for the West Coast Oil Pipeline, provide the first practical indications of how the government may use the Act to advance major infrastructure projects through streamlined federal approvals while maintaining Indigenous consultation and environmental assessment requ
CanadaGovernment, Public Sector
McMillan LLP
McMillan LLP
Article

A Matter Of Interpretation: Termination Clause Prevails Under The Canada Labour Code

The Ontario Superior Court of Justice has applied the Baker v. Van Dolder's Home Team framework to uphold a termination clause under the Canada Labour Code, rejecting a plaintiff's claim for common law reasonable notice. This decision demonstrates how courts will now interpret employment agreements by examining the parties' objective intentions rather than conducting technical word-by-word analysis of contractual provisions.
CanadaEmployment and HR
McMillan LLP
McMillan LLP