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No longer business as usual

No longer business as usual. Nicholas Milne Senior Associate Baxter IP. Patent-eligibility of “business methods”. 2. Patentable?. Patentable or not? Example 1 of 3. 3. Patentable?. Patentable or not? Example 2 of 3. 4. Patentable?. Patentable or not? Example 3 of 3. 5. Patentable?.

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No longer business as usual

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  1. No longer business as usual Nicholas Milne Senior Associate Baxter IP Patent-eligibility of “business methods”

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

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

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

  5. 5. Patentable? Patentable or not? Score sheet

  6. 5. Patentable? Patentable or not? Score sheet

  7. 6.7. Decisions 1 2 3 4 5 6 7 8 9 10 11 1 2 3 4 1959 2006 2012

  8. Positions • No more “tech washing” • Computers “merely incidental” • “Substance over form” • Computer implementation is patentable Patent Attorneys Delegates ? Examiners • “Business methods” not patentable

  9. 8. Legislation Patents Act: “manner of new manufacture”

  10. 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”

  11. 10. Court decisions CCOM “a mode or manner of achieving an end result which is an artificially created state of affairsof utility in the field of economic endeavour”

  12. 11. Court decisions • “intellectual information” • Mere working directions “Business methods“ not unpatentable Grant Not patentable Test “Manner of manufacture” scheme without effect Irrespective of field • mathematical algorithm “useful product” result

  13. Summary Distinguish between embodiment and result Manner of manufacture? Embodiment Result Not relevant • Practical application? • Commercial or industrial applicability

  14. 12. Application artificially created state of affairs

  15. 13. Application Not artificially created state of affairs Hedging losses in the energy industry by investing in other segments of that industry A method of protecting an asset using trusts

  16. Computer Application Computer A process for curing synthetic rubber by calculating the Arrhenius equation Not patentable Patentable

  17. Positions • No more “tech washing” • “Substance over form” • Computers “merely incidental” • Computer implementation is patentable Patent Attorneys Delegates ? Examiners • “Business methods” not patentable

  18. 14, 15 .Patent Attorneys A particular technological environment ≠ patent eligible Schemes without effect are not patentable Change in state or information in a part of a machine Grant Grant Patentable if execution in a computer environment Bilski State Street For Against Insignificant post-solution activity Diehr • Final share price momentarily fixed for recording Welcome Real-Time Amazon 1-click practical embodiment not patentable Writing of new information to the Behaviour file and the printing of the coupon

  19. Positions • No more “tech washing” • “Substance over form” • Computers “merely incidental” • Computer implementation is patentable Patent Attorneys Delegates ? Examiners • “Business methods” not patentable

  20. 16-19. Delegates 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

  21. 16-19. Delegates Peripheral or subordinate physical effect not enough Computer “Merely incidental” Delegate’s Position Substance over form

  22. Positions • No more “tech washing” • “Substance over form” • Computers “merely incidental” • Computer implementation is patentable Patent Attorneys Delegates ? Examiners • “Business methods” not patentable

  23. 20-21. Examiners • 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”.

  24. 22,23. Amazon 1 Click 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

  25. 24. Amazon 1 Click 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.

  26. 25. Amazon 1 Click 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.

  27. 26. Amazon 1 Click 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

  28. 27. Expected Outcome Expected outcome in Australia • No exclusion to “Business methods” • “Substance over form” wrong • Mere practical embodiment insufficient • Test remains as per NRDC

  29. 28. Tips to Avoid Refusal Avoid rejection • Prosecution • Defer & Delay • Innovation System • Drafting • Claims must result in “artificially created state of affairs” • Computer involvement not enough

  30. 28. Tips to Avoid Refusal 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.

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