Subject Matter – Not the only game in town

1. Business Method Patents And Canadian CourtsIP OsgoodeMarch 13, 2009Andy ReddonMcCarthy Tétrault LLP

2. Subject Matter – Not the only game in town • Serious policy issues arise from from method patents • Policy concerns need not be addressed solely from the subject matter point of view • Anticipation • Obviousness • Breadth • Subject Matter

3. Anticipation • Examination in CIPO • a patent document focus • literature searches difficult for BMPs • less likely to get relevant art • Inherency • prior publication or use of the steps anticipates (Abbott, Sanofi) • even if use was unknowing • History of human activity is diverse and not searchable on-line

4. Obviousness • CIPO scrutinty v. Scrutiny of a motivated infringer • Sanofi - a new day? • look to inventive concept of claims (even if not recited) • is that self-evident • “obvious-to-try” (Canada) v. (US & UK) • Federal Court not as reluctant to brand invention obvious as U.S. Courts (mechanistic)

5. Breadth • Claims Broader • Amfac Foods – missing limitations • A method of managing risk in commodity prices comprising: (a) initiating transactions between supplier and consumer at prices according to formula (b) identifying counterparties (c) initiating transaction between supplier and counterparty to balance risk.

6. Subject Matter • Is Bilski Different? • If so, is it coming to Canada?

7. Is Bilski Different? • Bilski • machine or transformation • don’t be fooled by: • meaninless limitations, or • extra-solution activity • Note the “OR” • CIPO • act or series of acts • performed by physical agent on physical object • AND change in character or condition • Note the “AND”

8. Is Bilski Different • The transformation of Bilski • does not have to be a transformation of physical object or substance (page 25 – raw material) • can be a transformation of some types of data (See discussion of Abele @ p.26 of Bilski) • broad claim to tranform data – no subject matter • narrow claim to transform data form bones into depiction of bones – sunject matter • transformation of data representing underlying physical object or substance – Patentable? • transformation of data representing more abstract things like risk and not a physical object or substance – Not Patentable?

9. Which Data represent physical and tangible objects • electronic record of ownership of gold bullion (represents a physical object) • electronic record of ownership of futures contract for gold bullion (represents a legal relationship/risk) • electronic record of bank balance (represents currency/bank notes)

10. Is Bilski Coming to Canada? Sanofi – revisits Beloit tests for anticipation and obviousness for a num,ber of reasons, including: There is a similarity between the current state of the law in the United Kingdom and the United States in respect of “obvious to try”. It is now clear that both jurisdictions accept that an “obvious to try” test can be relevant in an obviousness inquiry. The United States Supreme Court has now stated so explicitly in KSR. The convergence of the United Kingdom and the United States law on this issue suggests that the restrictiveness with which the Beloit test has been interpreted in Canada should be re-examined.

11. Federal Court? • If you like Bilski in a given case: • it gives a reasonably bright line • SCC says look at foreign law • no need for convergence between US and UK because UK statute different • If you don’t like Bilski • it give not meaningful dividing line at all • SCC only looks at foreign law to construe Canadian statute where there is “convergence” and US/UK are not convergent