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Business Methods: Patentable? No, yes, maybe. Implications? IP Osgoode, Toronto

Business Methods: Patentable? No, yes, maybe. Implications? IP Osgoode, Toronto Krishna K. Pathiyal Friday, March 13, 2009

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Business Methods: Patentable? No, yes, maybe. Implications? IP Osgoode, Toronto

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  1. Business Methods: Patentable? No, yes, maybe. Implications? IP Osgoode, Toronto Krishna K. Pathiyal Friday, March 13, 2009 Note: This presentation is intended for educational purposes only and does not replace independent professional legal advice. Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries.

  2. Subject-Matter Legislation • 35 USC Section 101 • “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” (Emphasis added) • Sec. 2 of Canadian Patent Act • “Any new and useful art, process, machine, manufacture or composition of matter…” (Emphasis added)

  3. Evolution Broad Interpretation • “include anything under the sun that is made by man.” (Chakrabarty, USSC, 1980, citing Congressional intent of section 101) Limits exist • “Fundamental principles” that are “storehouse of knowledge” • Laws of nature, physical phenomena, and abstract ideas • Benson (USSC, 1970): No practical application, or would preempt all uses • Diehr (USSC, 1981): Transformation involved & no preemption, but rather a specific and practical application • State Street (CAFC, 1998): “useful, concrete and tangible result” test

  4. Business Method Patent Statistics Decrease in filings due to effect of dot-com bust Dramatic increase due to dot-com boom Post State Street decision Decrease in issued patents due to PTO additional scrutiny # FILED # ISSUED

  5. Bilski • Machine-or-Transform Test:A claimed process is surely patent-eligible under sec. 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. • Factors: • the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility; • the involvement of the machine or transformation in the claimed process must not merely be an insignificant extra-solution activity (e.g., data gathering); • the transformation must be central to the purpose of the claimed process; • mere field-of-use limitations are likely to be insufficient to impart patent eligibility.

  6. Spectrum of Patent Subject-Matter Eligibility

  7. Challenges: IP Risk Management

  8. References • [1] Allison, John and Lemley, Mark. Empirical evidence of the validity of litigated patents, 26 AIPLA Q.J. 185. 205 (1998). • [2] Janicke, Paul M. and Ren, LiLan. Who wins patent infringement cases?, 34 AIPLA Q.J. 1, 1-6 (2006).

  9. Thank you.

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