* 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.* 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?Business Methods: Patentable?No, yes, maybe. Implications?No, yes, maybe. Implications?IP Osgoode, TorontoIP Osgoode, Toronto

Krishna K. PathiyalKrishna K. PathiyalFriday, March 13, 2009Friday, March 13, 2009

Note: This presentation is intended for educational purposes only and Note: This presentation is intended for educational purposes only and does not replace independent professional legal advice. Statements of does not replace independent professional legal advice. Statements of fact and opinions expressed are those of the speaker individually and fact and opinions expressed are those of the speaker individually and are not the opinion or position of Research In Motion Limited or its are not the opinion or position of Research In Motion Limited or its subsidiaries.subsidiaries.

* 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.* 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 LegislationSubject-Matter Legislation

35 USC Section 10135 USC Section 101 ““Whoever invents or discovers any new and useful Whoever invents or discovers any new and useful processprocess, ,

machine, manufacture, or composition of matter, or any new and machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” (Emphasis added)to the conditions and requirements of this title.” (Emphasis added)

Sec. 2 of Canadian Patent ActSec. 2 of Canadian Patent Act ““Any new and useful art, Any new and useful art, processprocess, machine, manufacture or , machine, manufacture or

composition of matter…” (Emphasis added)composition of matter…” (Emphasis added)

* 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.* 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.

EvolutionEvolutionBroad 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

* 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.* 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.

0

1000

2000

3000

4000

5000

6000

7000

8000

9000

10000

1995 1996 1997 1998 1999 2000 2001 2002 2003

Dramatic increase due to dot-com boom

Post State Street decisionDecrease in issued patents due to PTO additional scrutiny

Decrease in filings due to effect of dot-com bust

# FILED

# ISSUED

Business Method Patent StatisticsBusiness Method Patent Statistics

* 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.* 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 Machine-or-Transform Test:

A claimed process is surely patent-eligible under sec. 101 if: (1) it is tied to a 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 particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.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.

* 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.* 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 EligibilitySpectrum of Patent Subject-Matter Eligibility

Increase Eligibility Decrease

TechnicalInnovations

HybridInnovations

Pure Business Innovations

Bilski

State Steet

* 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.* 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 ManagementChallenges: IP Risk Management

IP Risk TypeIP Risk Type ImpactImpactTitle risksTitle risks N/AN/A

Investment risksInvestment risks ↑↑??

Dissemination & Dissemination & storage risksstorage risks

N/AN/A

Enforcement risksEnforcement risks ↑↑??

Infringement risksInfringement risks ↓↓??

* 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.* 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.

ReferencesReferences

[1] Allison, John and Lemley, Mark. [1] Allison, John and Lemley, Mark. Empirical evidence of the Empirical evidence of the validity of litigated patentsvalidity of litigated patents, 26 AIPLA Q.J. 185. 205 (1998)., 26 AIPLA Q.J. 185. 205 (1998).

[2] Janicke, Paul M. and Ren, LiLan. [2] Janicke, Paul M. and Ren, LiLan. Who wins patent infringement Who wins patent infringement cases?,cases?, 34 AIPLA Q.J. 1, 1-6 (2006). 34 AIPLA Q.J. 1, 1-6 (2006).

* 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.* 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.Thank you.