1. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Business Methods: Patentable? No, yes, maybe. Implications? IP Osgoode, Toronto Krishna K. Pathiyal Friday, March 13, 2009 Note: This presentation is intended for educational purposes only and does not replace independent professional legal advice. Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries.

2. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Subject-Matter Legislation 35 USC Section 101 35 USC Section 101 “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” (Emphasis added) “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” (Emphasis added) Sec. 2 of Canadian Patent Act Sec. 2 of Canadian Patent Act “Any new and useful art, process, machine, manufacture or composition of matter…” (Emphasis added) “Any new and useful art, process, machine, manufacture or composition of matter…” (Emphasis added)

3. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Evolution Broad Interpretation “include anything under the sun that is made by man.” (Chakrabarty, USSC, 1980, citing Congressional intent of section 101) Limits exist “Fundamental principles” that are “storehouse of knowledge” Laws of nature, physical phenomena, and abstract ideas Benson (USSC, 1970): No practical application, or would preempt all uses Diehr (USSC, 1981): Transformation involved & no preemption, but rather a specific and practical application State Street (CAFC, 1998): “useful, concrete and tangible result” test

4. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Dramatic increase due to dot-com boom Post State Street decision Decrease in issued patents due to PTO additional scrutiny Decrease in filings due to effect of dot-com bust # FILED # ISSUED Business Method Patent Statistics

5. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Bilski A claimed process is surely patent-eligible under sec. 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Machine-or-Transform Test: A claimed process is surely patent-eligible under sec. 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Factors: Factors: the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility; the involvement of the machine or transformation in the claimed process must not merely be an insignificant extra-solution activity (e.g., data gathering); the transformation must be central to the purpose of the claimed process; mere field-of-use limitations are likely to be insufficient to impart patent eligibility.

6. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Spectrum of Patent Subject-Matter Eligibility

7. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Challenges: IP Risk Management IP Risk Type Impact Title risks N/A Investment risks ↑? Dissemination & storage risks N/A Enforcement risks ↑? Infringement risks ↓?

8. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. References [1] Allison, John and Lemley, Mark. Empirical evidence of the validity of litigated patents, 26 AIPLA Q.J. 185. 205 (1998). [1] Allison, John and Lemley, Mark. Empirical evidence of the validity of litigated patents, 26 AIPLA Q.J. 185. 205 (1998). [2] Janicke, Paul M. and Ren, LiLan. Who wins patent infringement cases?, 34 AIPLA Q.J. 1, 1-6 (2006). [2] Janicke, Paul M. and Ren, LiLan. Who wins patent infringement cases?, 34 AIPLA Q.J. 1, 1-6 (2006).

9. * Statements of fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its subsidiaries. Thank you.