ITCan May 27, 2010 Robert H. Wilkes rwilkesridoutmaybee ridoutmaybee

1. ITCan � May 27, 2010 Robert H. Wilkes rwilkes@ridoutmaybee.com www.ridoutmaybee.com

2. There is uncertainty as to what is patent-eligible subject matter. There will continue to be uncertainty as to what is patent-eligible subject matter.

3. Cover all possibilities in contracts � What if patent-eligible, what if not patent-eligible? Exploit opportunities - if the current test or climate is favourable seek summary judgment - seek re-examination Leave open opportunities - consider filing applications without knowing if patent-eligible If waiting does no harm then wait for Bilski, but Bilski will not provide all the answers.

4. Canada �invention� means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter (1800�s) United States 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 therefor, subject to the conditions and requirements of this title. (1700�s)

5. Canada No patent shall be granted for any mere scientific principle or abstract theorem. (The Patent Act) United States �fundamental principles� = "laws of nature, natural phenomena, and abstract ideas.� (Case law)

8. �� I think the word �art� ... extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public.� Supreme Court of Canada Shell Oil Co. v. Commissioner of Patents (1982), 67 C.P.R. (2d) 1 �An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition.� Exchequer Court of Canada Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101

9. 1. Not patent-eligible - not tied to a particular machine or apparatus, and doesn�t transform a particular article into a different state or thing. (Majority Opinion) �Modern Physical�

10. 2. Not patent-eligible - agree with above and processes must involve manufactures, machines, or compositions of matter. (Concurring Opinion) �Classical Physical� 3. Patent-eligible - the claim is to a particular process for a specified purpose. (Dissenting Opinion) �Post-Modern State-Street�

11. 4. Not patent-eligible - not technological or scientific - not tied to the laws of nature (Dissenting Opinion) �Classical Scientific� 5. Not patent-eligible � either abstract idea therefore not useful or obvious on its face (Dissenting Opinion) �Romantic Post-Modern�

15. Robert H. Wilkes B.A.Sc. (Elec. Eng.), LL.B. Phone: (416) 865-3534 rwilkes@ridoutmaybee.com

19. �The expression �business methods� refers to a broad category of subject matter which often relates to financial, marketing and other commercial activities. These methods are not automatically excluded from patentability, since there is no authority in the Patent Act or Rules or in the jurisprudence to sanction or preclude patentability based on their inclusion in this category. Patentability is established from criteria provided by the Patent Act and Rules and from Jurisprudence as for other inventions.�

20. Patent eligible subject matter is defined by the Patent Act and the Patent Rules as interpreted by the courts. MOPOP is not law Commissioner�s Decisions are not law The Commissioner can ignore them But the Commissioner can also cite them to you

21. New No definition in the Act S. 28.2(1) - subject-matter of claim must not be previously disclosed � limited absolute novelty S. 28.3 - invention must not be obvious Novelty and obviousness not expressly tied to �new�

23. To be statutory, an �art� must belong to a field of TECHNOLOGY and, consequently, be what the courts have termed a �useful art� and a �manual or productive art�. An art must be the practical application of knowledge, and must therefore be defined in a manner that gives practical effect to the knowledge. An art, therefore, is claimed as either a method or a use. � A statutory �method� must be an act or series of acts performed by some physical agent upon some physical object and producing in that object some change of either character or condition. Whether or not a method is statutory is not determined by whether or not it produces a statutory product. � A �use� is the application of certain means to achieve a specific result. A �use� differs from a �method� in that the contribution to the art must not be resident in the act or series of acts by which the result is achieved, but rather must arise solely from the recognition that the certain means can be applied (in an obvious way) to achieve the specific result.

24. �An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition. It is abstract in that, it is capable of contemplation of the mind. It is concrete in that it consists in the application of physical agents to physical objects and is then apparent to the senses in connection with some tangible object or instrument.� Exchequer Court of Canada Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101,

25. �� I think the word �art� in the context of the definition must be given its general connotation of �learning� or �knowledge� as commonly used in expressions such as �state of the art� or �the prior art��. The Court (in Tennessee Eastman), however, affirmed that �art� was a word of very wide connotation and was not to be confined to new processes or products or manufacturing techniques but extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public.� Supreme Court of Canada Shell Oil Co. v. Commissioner of Patents (1982), 67 C.P.R. (2d) 1

26. CIPO � A �process� implies the application of a method to a material or materials, and a statutory process must by necessity apply a statutory method. A process can be considered to be a mode or method of operation by which a result or effect is produced by physical or chemical action, by the operation or application of some element or power of nature or one substance to another. As with methods, whether or not a process is statutory is not determined by whether or not it produces a statutory product. Courts � � In the Shorter Oxford English Dictionary, one of the definitions of �process� is �A particular method of operation in any manufacture� �

27. CIPO � A �machine� is the mechanical embodiment of any function or mode of operation designed to accomplish a particular effect. A machine can be considered to be �any device that transmits a force or directs its application� or �a device that enables energy from one source to be modified and transmitted as energy in a different form or for a different purpose�.

28. Courts ... a non-living mechanistic product or process. For example, the Oxford English Dictionary ...: � �The action or process of making by hand . . .�. The action or process of making articles or material (in modern use, on a large scale) by the application of physical labour or mechanical power. � The Grand Robert de la langue fran�aise ...: [translation] Art or action or manufacturing. . . . The manufacture of a technical object (by someone).� Manufacturing by artisans, by hand, by machine, industrially, by mass production . . . .�� CIPO� The term �manufacture� was defined in Harvard College v. Canada (Commissioner of Patents) as being, broadly, �a non-living mechanistic product or process� and as being the process of making (by hand, by machine, industrially, by mass production...) TECHNICAL articles or material (in modern use on a large scale) by the application of PHYSICAL labour or mechanical power; or the article or material made by such a process�.

31. Concerning those cases, I would first observe that I doubt whether decisions dealing with the patentability of inventions under the U.K. Act are entitled in Canada to the weight which authors such as Fox (Canadian Law and Practice Relating to Letters Patent, 4th ed., p. 19) seem to think they should have. There are substantial differences between the British and Canadian statutes which need not be enumerated. (SCC) ... the intention of a Legislature must be gathered from the language it has used and the task of construing that language is not to satisfy ourselves that as used it is adequate to an intention drawn from general considerations or to a purpose which might seem to be more reasonable or equitable than what the language in its ordinary or primary sense indicates. (SCC)