Dimock Stratton LLP

Business Methods and Patentable Subject Matter

Thu, 02 Feb 2012 00:00:00 EST

Etienne de Villiers will be one of three panellists discussing the context and implications of Canada (A.G) v. Amazon.com, Inc., Fed CA. This teleseminar is being hosted by Osgoode Professional Development.

Topics to be discussed are:

The aspects of the patent claim that were at issue
The aspects of the trial level analysis expressly upheld or rejected by the appeal court
What we now know – and don’t know – about the patentability of business methods
The role of a “physicality requirement” in these types of applications
What principles can we now say will be applied to construction and adjudication of this type of claim? Is there a clear (or even unclear) test?
Distinguishing subject matter exclusions from the rule against abstract claims
What are some key unanswered questions in the wake of these proceedings?
The U.S. experience – how we compare now. Does the US jurisprudence and experience provide helpful guidance going forward?
Suggestions for drafting business method patent applications in light of the recent developments

Dimock Stratton Tier 1 Firm

Wed, 01 Feb 2012 00:00:00 EST

Dimock Stratton is listed in the Tier 1 category of the Managing Intellectual Property (MIP) rankings for the Patent Contentious category for 2012.

The MIP survey consists of rankings of the leading firms practicing intellectual property in each country. A team of researchers contact firms in 80 jurisdictions to ask for information and feedback on the rankings. No firm can vote for its own inclusion.

The trademark rankings will be released in March.

AIPLA Las Vegas - After Dinner Cocktail Reception

Wed, 25 Jan 2012 00:00:00 EST

Dimock Stratton will be hosting an after dinner cocktail reception at Caesars Palace on Wednesday January 25th, 2012 during the AIPLA Mid-Winter conference.

Place: Bradley Ogden Restaurant
Time: 9 pm to 11 pm

Please drop by for a nightcap if you are in Las Vegas

Dimock Stratton Highlighted in Top 10 IP Boutiques

Mon, 16 Jan 2012 00:00:00 EST

Dimock Stratton is once again highlighted in the Top 10 Canadian IP Boutiques article in the January issue of the Canadian Lawyer.

For the detailed article please click here.

16th Annual IP Law - The Year in Review

Thu, 12 Jan 2012 00:00:00 EST

Ron Dimock will be giving the Patents Update at the 16th Annual Intellectual Property Law - The Year in Review on Thursday January 12th, 2012.

Recent articles and upcoming appearances by DS Lawyers

Mon, 12 Dec 2011 00:00:00 EST

Recent Articles – August to November

Ron Dimock and Cristina Mihalceanu co-authored “The Art of Settling a Dispute: A step-by-step guide to negotiation” for the CBA Canadian Legal conference in August 2011.

Geoff Mowatt and Ryan Evans co-wrote “New 'disclosure' requirement for U.K. patents” for the Biotechnology focus section in The Lawyers Weekly on Sept. 2nd.

Mee Ling Wong wrote “Canadian Patent Office releases new guidelines" for the Information Technology focus section in The Lawyers Weekly on Sept. 30th.

Ron Dimock participated in the Patent Roundtable for the Who’s Who Legal Patent directory with 3 international IP practitioners (Fall 2011).

Upcoming Appearances and Speaking Engagements – Winter 2012

Ron Dimock will be speaking at the 16th Annual Intellectual Property Law - The Year in Review on the Patents Update scheduled for January 12th, 2012.

Mark Eisen will be the opening keynote speaker at the Insight - Patent Law conference in Toronto on Feb 6th, 2012.

Etienne de Villiers will be speaking at the Insight – Patent Law conference on “Effective strategies for Intellectual Property Disputes - Resolutions and remedies for your case” on Feb 6th, 2012.

Federated Press 6th Internet Law

Mon, 12 Dec 2011 00:00:00 EST

Etienne de Villiers will be speaking at the Federated Press 6th Internet Law conference.

The 2 day course will highlight on the following:

The latest copyright issues on the Web
How to protect your brand in cyberspace
Understanding of the challenges posed by Web 2.0 sites
Examine methods for protecting corporate data
Ensure your online contracts are enforceable
Uncover the latest legal issues impacting open source software

"Business method" inventions are patent-eligible, Federal Court of Appeal rules

Thu, 24 Nov 2011 00:00:00 EST

In its anxiously-awaited decision released on November 24, the Federal Court of Appeal allowed the Commissioner of Patent's appeal in Commissioner of Patents v. Amazon.com, Inc. The Federal Court had ruled in 2010 that Amazon's claims to its "one-click" ordering system were patent-eligible, and that the Commissioner's theories of subject matter analysis, categorical rejection of "business method" inventions, and definition of a patentable "art" were incorrect.

The Federal Court of Appeal's reasons for judgment confirm that business methods are not per se unpatentable, and also confirm the incorrectness of the Commissioner's analysis. However, the court's decision may also represent a retreat from the broad definition of a patentable "art" set out in the Supreme Court's 1982 Shell Oil decision, and as explained in the later Progressive Games decision.

In allowing the appeal, the appellate court agreed with Justice Phelan's finding that the Commissioner's subject matter analysis, which included separate analysis of the "form" and "substance" of the claims, was incorrect in law. The identification of the actual invention must be grounded in a purposive construction of the claims, as mandated by the Supreme Court in Free World Trust and Whirlpool. The "technological" test also applied by the Commissioner for subject matter eligibility was unclear, and ought not to be used as a stand-alone basis for distinguishing patentable from non-patentable subject matter.

The Federal Court of Appeal also agreed with the lower court's conclusion that there was no Canadian jurisprudence that determined conclusively that a business method could not be patentable subject matter. However, the court cautioned that it did not necessarily follow that a business method that was also an abstract idea (and therefore unpatentable under s. 27(8)) would become patentable simply because it had a practical application. The "practical application" characteristic, it may be recalled, was derived from Shell Oil, which defined an "art" as including "new and innovative methods of applying skill or knowledge provided they produce effects or results commercially useful to the public". Progressive Games restated this definition, adding that an art was also "not a disembodied idea but [having] a method of practical application".

The court therefore stopped short of the lower court's decision that Amazon's claimed invention was patentable subject matter: on a purposive construction, the court said, Amazon's claims might fail for the same reason as the claims in the older Federal Court of Appeal Schlumberger decision. In Schlumberger, a method of collecting, recording and analyzing data used a computer programmed according to a mathematical formula. The use of a computer was a practical application, and the resulting information was useful; however, Schlumberger's claim lacked patentable subject matter because the only novel aspect of the claim was the mathematical formula, which was a mere scientific principle or abstract theorem and thus prohibited by s. 27(8). On the other hand, the court also observed that the purposive construction of Amazon's claims may be distinguishable from Schlumberger if the novel one-click method of completing an online purchase is only one essential element in a patentable combination. The court thus refrained from absolutely pronouncing the "one-click" solution abstract or not abstract, but may have hinted that it was abstract in suggesting that it would have to be one of a number of claimed essential elements to be patentable. Interestingly, earlier in the decision the court had characterized the method as a "technological solution to a practical problem", although of course the term term "technological" was criticized for its vagueness.

The insufficiency of practical application, by itself, to qualify an invention as statutory was reiterated by the court in its discussion of the meaning of "art" as a statutory category of invention. The court agreed with Justice Phelan that patentable subject matter must be something with physical existence or something that manifests a discernible effect or change--which the court tagged as the "physicality" requirement--but did not agree, to the extent that the lower court decision might have suggested it, that the physicality requirement was met simply by the invention having a practical application. On this point the court appears to have focused more on reconciling the outcome of Schlumberger than on Shell Oil.

Given the requirement for a purposive construction, the Federal Court of Appeal found that Justice Phelan had erred in substituting his own claim construction for the Commissioner's, on the basis of the record before him. A purposive construction must be undertaken with a foundation of knowledge about the state of the relevant art. While the Commissioner has the assistance of the applicant's submissions and patent office staff with appropriate experience, courts generally require expert evidence from persons skilled in the art, which was not available in this case. It was not possible for the court to discern from the record what the Commissioner's decision would have been had patentability been assessed using the correct legal principles.

Accordingly, the application was again remanded to the Commissioner for examination on an expedited basis in accordance with the Federal Court of Appeal's reasons. Thus, the final fate of Amazon's application is still unknown and less certain, given that Amazon no longer has the advantage of the lower court's direction that the claims constitute patentable subject matter.

Commissioner of Patents v. Amazon.com, Inc., 2011 FCA 328 (PDF)

SCC rules that mere hyperlink not a publication for the purposes of defamation

Wed, 19 Oct 2011 00:00:00 EST

In a decision released today, The Supreme Court of Canada has held that merely hyperlinking to content on the Internet does not constitute publication of the content for the purposes of defamation. In Crookes v. Newton, 2011 SCC 47, which will likely be an important decision for the future of the Internet and freedom of expression, the Justice Abella for the majority stated that "a hyperlink, by itself, should never be seen as 'publication' of the content to which it refers." The court was unanimous in the result although some judges differed as to the reasoning.

The plaintiff had argued that the defendant was a publisher of defamatory material to which the defendant's website linked even though the defamatory material did not appear on the defendant's website.

The majority of the Supreme Court found parallels between hyperlinks and footnotes:

[30] Hyperlinks thus share the same relationship with the content to which they refer as do references. Both communicate that something exists, but do not, by themselves, communicate its content. And they both require some act on the part of a third party before he or she gains access to the content. The fact that access to that content is far easier with hyperlinks than with footnotes does not change the reality that a hyperlink, by itself, is content neutral — it expresses no opinion, nor does it have any control over, the content to which it refers.

The decision upholds a decision of the Court of Appeal for British Columbia, summarized previously.

CIPO/OCAD University

Thu, 13 Oct 2011 00:00:00 EST

Etienne de Villiers will be the Intellectual Property speaker at OCAD University in Toronto. He will be discussing "IP: What's in it for you?".

OBA - Young Lawyers' Division - CLE Committee

Tue, 04 Oct 2011 00:00:00 EST

Geoff Mowatt will be co-chairing "Dialogue with the Bench and Bar" presented by the OBA Young Lawyers' Division - CLE committee on October 4th, 2011.

Ron Dimock will be speaking during the "Successful Appellate Advocacy" session. He will be discussing the following topics:

simplifying the case on appeal
identifying the error(s) of the trial judge, and the appropriate standard of review
structuring your case on appeal
how to overcome contrary case law
effective use of a compendium for the appeal hearing
interacting with the court
having the last word

Mark Eisen named President of IPIC

Mon, 19 Sep 2011 00:00:00 EST

Dimock Stratton congratulates Mark Eisen on his appointment as President of the Intellectual Property Institute of Canada for the upcoming year.

IPIC is Canada's national association of intellectual property lawyers and agents, representing the interests of practitioners and providing professional development services to ensure high standards of practice in the field of intellectual property.

IPIC Reception

Thu, 15 Sep 2011 00:00:00 EST

Dimock Stratton will be co-hosting a dessert reception at the Four Seasons Hotel in Chicago on September 15th from 9 pm to 1 am. The reception is being held after the IPIC function of dinner at Bistrot Margot and live comedy at The Second City.

Please feel free to drop by the Delaware Room anytime that evening for a refreshment or dessert.