Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: tbailey@patentable.com http//www.patentable.

1. Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: tbailey@patentable.com http//www.patentable.com Patents - Lecture 3

2. Course Materials • Handouts • PowerPoint Slides http://www.patentable.com/lectures/

3. Lecture Outline 1. Computer-related subject matter and Business Methods 2. Combinations and Aggregations • Novelty - test for anticipation 4. Obviousness 5. Utility

4. Lecture Outline 6. Patent Specifications 7. Ownership

5. 9-10

6. Schlumberger case(Casebook , pp. 84-86) • The Applicant sought patent protection for a method of obtaining useful information about geological formations • The method involved lowering instruments into bore holes to measure characteristics of the subterranean soil • The measurements were recorded on magnetic tapes and processed by a programmed computer • The Court applied a two step test for determining whether the claims related to statutory subject matter • In the first step, the Court determined: “What, according to the application has been discovered?”

7. Schlumberger case(Casebook , pp. 84-86) • The Court then asked: “Is that discovery patentable regardless of whether a computer is or should be used to implement the discovery?” • On the facts of this case, the Court held that the discovery made by the applicant was the various calculations and mathematical formulae used to make the calculations which were implemented by the computer • The calculations were considered to be a series of mental operations akin to a scientific principle or abstract theorem and hence patent protection was not available

9. 85

11. 86

13. State Street Bank case http://cyber.law.harvard.edu/property00/patents/StateStreet.html

14. State Street Bank case http://cyber.law.harvard.edu/property00/patents/StateStreet.html “Today we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a a mathematical algorithm, formula, or calculation, because it produces a ‘useful, concrete and tangible result’ - a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”

15. Bilski case(Casebook , pp. 87-92) • The applicant sought patent protection for a method of hedging risks in commodities trading • An en banc panel of the Court of Appeals for the Federal Circuit held that, to be eligible for patent protection, a process must either be (1) tied to a particular machine or apparatus; or (2) transform a particular article into a different state or thing • The Court held that the applicant’s process was non-transformative and encompassed a purely mental process • The case was appealed to the Supreme Court of the United States

16. Bilski case(Casebook, pp. 87-92) • The Supreme Court of the United States decision in Bilski was released on June 28, 2010 • The “machine or transformation” (MOT) test is not the sole test to determine patent eligibility, but it is a useful guideline • The Court declined to explicitly endorse the State Street test • A categorical exclusion of business methods from patentable subject matter is inappropriate • Claims to an abstract idea (like Bilski’s) are not eligible for patent protection

18. 87

20. 89-90

22. 91

23. 91

25. 92

26. Amazon “One-Click” case(Casebook , pp. 93-104) • The applicant sought patent protection for a method of ordering items on-line by means of a single click of a computer mouse or other single action • The Canadian Patent Appeal Board held that that business methods do not qualify for patent protection and that the claimed method related to “non-technological” subject matter • Both the “form” and “substance” of the claimed invention must be considered • This decision has was overturned by the Federal Court

27. Amazon “One-Click” case(Casebook , pp. 93-104) • Phelan J. held that the legal framework adopted by the Commissioner was unsupported by law and amounted to improper policy-making • On further appeal , the FCA substantially agreed with the findings of Phelan J. • The requirement that an invention must be “technological” was vague and confusing • There is no Canadian jurisprudence which clear bars patent protection for business methods

28. Amazon “One-Click” case(Casebook , pp. 93-104) • A patentable “art” must be something with physical existence, or something that manifests a discernable effect or change. • The identification of the actual invention should be grounded in a purposive construction of the patent claims • It was not appropriate for Phelan J. to have construed the claims without the benefit of expert evidence • The application was referred back to the Examiner for further examination

29. Amazon “One-Click” case(Casebook , pp. 93-104) • Following the FCA decision the applicant filed a voluntary amendment • The application issued as Canadian Patent No. 2,246,933 on January 17, 2012 • Accordingly, a further appeal to the SCC will not be pursued

31. 93

33. 94

34. 94

36. 96

37. 97

39. 99

40. 99

42. 100

44. 101

46. 102

48. 103

50. 104