no longer business as usual patent-eligibility of “business methods” nicholas milne senior...

No longer business as usualPatent-eligibility of “business methods”

Nicholas MilneSenior AssociateBaxter IP

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2. Patentable?Patentable or not? Example 1 of 3

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3. Patentable?Patentable or not? Example 2 of 3

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4. Patentable?Patentable or not? Example 3 of 3

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5. Patentable?Patentable or not? Score sheet

Patent Application Patentable?

Mortgage Reward Programme

Loan processing system and method

Valuation Indifferent Non-Capitalization Weighted Index and Portfolio

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5. Patentable?Patentable or not? Score sheet

Patent Application Date

2003204280 Mortgage Reward Programme Accepted2008-03-18

2001097126 Loan processing system and method Accepted2006-06-15

2005213293 Valuation Indifferent Non-Capitalization Weighted Index and Portfolio

Refused2010-December-2010

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6.7. Decisions

1959 20122006

1 432 3 4 5 6 7 8 109 1121

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Positions

Patent Attorneys Delegates

Examiners

•Computer implementation is patentable

•No more “tech washing”•Computers “merely incidental”•“Substance over form”

•“Business methods” not patentable

?

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8. LegislationPatents Act:

“manner of new manufacture”

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9. Court decisions

NRDC

“offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art”

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10. Court decisions

CCOM

“a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour”

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11. Court decisions

Grant

“Business methods“ not unpatentable

Test

“Manner of manufacture”

Irrespective of field

Not patentable

“intellectual information”

mathematical algorithm

Mere working directions

scheme without effect

“useful product” result

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Distinguish between embodiment and result

Embodiment Result

•Practical application?•Commercial or industrial applicability

Manner of manufacture?

Not relevant

Summary

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12. Application

artificially created state of affairs

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13. Application

Not artificially created state of affairs

A method of protecting an asset using trusts

Hedging losses in the energy industry by investing in other segments of that industry

Computer Application

calculating the Arrhenius equationA process for curing synthetic rubber by

Computer

Not patentable

Patentable

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Positions

Patent Attorneys Delegates

Examiners

•Computer implementation is patentable

•No more “tech washing”•“Substance over form”•Computers “merely incidental”

•“Business methods” not patentable

?

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Patentable if execution in a computer environment

For

Change in state or information in a part of a machine Grant

Welcome Real-Time

Writing of new information to the Behaviour file and the printing of the coupon

Final share price momentarily fixed for recording

State Street Against

GrantSchemes without effect are not patentable

Bilski

A particular technological environment ≠ patent eligible

DiehrInsignificant post-solution activity

Amazon 1-click

practical embodiment not patentable

14, 15 .Patent Attorneys

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Positions

Patent Attorneys Delegates

Examiners

•Computer implementation is patentable

•No more “tech washing”•“Substance over form”•Computers “merely incidental”

•“Business methods” not patentable

?

Invention Pathways [2010]

• 1. An invention specific commercialization system to facilitate success of inventions, the system including the steps of:– a) applying for patent protection,– b) conducting a review,– c) preparing a research and development plan,– d) conducting prototype testing,– e) determining product positioning,– f) conducting a manufacturing checklist,– g) entry of the information above into an electronically fillable

checklist – h) policing compliance

16-19. Delegates

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Delegate’s Position

Peripheral or subordinate physical effect not enough

Computer “Merely incidental”

Substance over form

16-19. Delegates

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Positions

Patent Attorneys Delegates

Examiners

•Computer implementation is patentable

•No more “tech washing”•“Substance over form”•Computers “merely incidental”

•“Business methods” not patentable

?

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• Examiner approach– Step 1: Exclude computer as “merely incidental”– Step 2: What’s been “added” or “discovered”– Step 3: Is what’s been “added” or “discovered” patentable (i.e.

technical) or is it a “business method”.

20-21. Examiners

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Federal Court of Canada

• The Commissioner’s Approach– “Form and substance approach” / “Computer incidental”– What was “added” or “discovered” was streamlining ordering method

= ∴ “business method”– “Technology” requirement

22,23. Amazon 1 Click

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Federal Court of Canada

• No “tradition” for the exclusion of “business methods”• Reject “form and substance approach”• “Technological” requirement too restrictive• Practical application rather physicality of the invention.

24. Amazon 1 Click

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Federal Court of Canada

[78] The absolute lack of authority in Canada for a “business method exclusion” and the questionable interpretation of legal authorities in support of the Commissioner’s approach to assessing subject matters underline the policy driven nature of her decision. It appears as if this was a “test case” by which to assess this policy, rather than an application of the law to the patent at issue.

25. Amazon 1 Click

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Federal Court of Appeal

• Agreed• Qualified

– Abstract idea not patentable subject matter merely because it has a practical embodiment

– Inappropriate for non-expert to pursue purposive construction

26. Amazon 1 Click

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Expected outcome in Australia

• No exclusion to “Business methods”• “Substance over form” wrong• Mere practical embodiment insufficient• Test remains as per NRDC

27. Expected Outcome

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Avoid rejection

• Prosecution– Defer & Delay– Innovation System

• Drafting– Claims must result in “artificially created state of affairs”– Computer involvement not enough

28. Tips to Avoid Refusal

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A computing device for generating invention specific noncompliance notification data, the computing device comprising:

a processor for processing digital data;a memory device for storing digital data including computer program code and being

coupled to the processor;a data interface for sending and receiving digital data and being coupled to the

processor, wherein the processor is controlled by the computer program code to:receive, via the data interface, filing date data representing the filing date of a patent

application;calculate requirement data representing at least one requirement and associated

completion date at least in accordance with the filing date data;receive, via the data interface, compliance data representing compliance with the at

least one requirement;…send, via the data interface, noncompliance notification data representing

noncompliance with the at least one requirement.

28. Tips to Avoid Refusal