Federal Court Of Canada Finds Commissioner Of Patents Erred In Assessment of Inventive Concept

On March 28, 2023, the Federal Court of Canada (the Court) in Coca-Cola Company v Canada (Attorney General), 2023 FC 424, held that the Commissioner of Patents (the Commissioner) erred in law in its assessment of the inventive concept relating to a patent for plastic beverage and food containers and methods for making same, and ordered the matter to be referred back to the Commissioner for redetermination of certain claims.

The Coca-Cola Company (Coca-Cola) is the owner of Canadian Patent Application No. 2,718,279, relating to “plastic beverage and food containers and methods for making beverage and food containers from polyethylene terephthalate [PET] polymers, where the PET polymer comprises a terephthalate component and/or diol component derived at least in part from bio-based materials”.  In response to its fourth office action, Coca-Cola amended its claims, resulting in 22 claims on file (the Claims on File).  Subsequently, Coca-Cola proposed an amended set of 18 claims (the Proposed Claims) in response to the Patent Appeal Board’s preliminary review, which included claims to a method of producing a bio-based PET polymer for a beverage container that were not part of the Claims on File.

In 2021, Coca-Cola appealed a decision from the Commissioner, which considered both the Claims on File and the Proposed Claims and refused to grant the application on the basis that the claims were obvious and did not satisfy Section 28.3 of the Patent Act.

In considering whether the Commissioner erred by failing to properly construe the inventive concept of each of the claims, the Court maintained that the Commissioner properly considered all elements of the claims to be essential and considered the essential elements of the Claims on File in its obviousness assessment.  However, the Court found that the first time the aspect of recyclability appeared as an element of the claims was in the Proposed Claims.  The Court therefore agreed with Coca-Cola’s assertion that the Commissioner’s failure to identify the ability to recycle in existing PET recycling systems as an essential element of at least one of the Proposed Claims contradicted the Commissioner’s recognition that all essential elements of the claims ought to be considered as part of the obviousness analysis.  Accordingly, the Court held that the Commissioner erred in not considering all essential elements of the Proposed Claims in the same manner as the Claims on File, which rendered the remainder of the obviousness analysis fundamentally defective.

The Court then turned to the following remaining issues:

1. Whether the Commissioner erred by failing to consider secondary indicia of non‑obviousness;
2. Whether the Commissioner erred by improperly introducing evidence of common general knowledge without providing Coca-Cola an opportunity to respond;
3. Whether the Commissioner erred by improperly narrowing the gap between the state of the art and the inventive concept of the claims; and
4. Whether the Commissioner erred by failing to establish the findability of a new reference and in failing to explain how the person of ordinary skill in the art would combine the art cited.

On each of these issues, the Court found that Coca-Cola’s arguments did not raise a reviewable error.

The Court ultimately allowed the appeal in part and referred the matter back to the Commissioner for redetermination of certain method claims in the Proposed Claims under Section 28.3 of the Patent Act.

Summary By: Steffi Tran