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

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

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

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

5. Patentable? Patentable or not?Score sheet Patent ApplicationPatentable? Mortgage Reward Programme Loan processing system and method Valuation Indifferent Non-Capitalization Weighted Index and Portfolio 5

5. Patentable? Patentable or not? Score sheet Patent ApplicationDate Mortgage Reward Programme Accepted Loan processing system and method Accepted Valuation Indifferent Non- Capitalization Weighted Index and Portfolio Refused 2010-December

6.7. Decisions

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

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

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” 10

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” 11

11. Court decisions 12 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

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

12. Application 14 artificially created state of affairs

13. Application 15 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

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

18 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 StreetAgainst Grant Schemes without effect are not patentable Bilski A particular technological environment ≠ patent eligible Diehr Insignificant post-solution activity Amazon 1-click practical embodiment not patentable 14, 15.Patent Attorneys

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

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 Delegates

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

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

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” Examiners

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 24 22,23. 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 Amazon 1 Click

Federal Court of Canada 26 [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

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 Amazon 1 Click

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

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