Business Method Patents Under Review

The US Federal Circuit Court of Appeals has decided to review a number of issues that go to the heart of business-method patents in the In re Bilski case. Essentially Bilski has claimed a method for managing risk.  The claim is not tied to any software or “machine”; it is merely a mental process of how to conduct business.  The court will review:

(1) Whether the business method claim in Bilski’s patent application is “patent-eligible subject matter”?

(2) What standards should be used to determining whether a process or method is eligible for patent protection?

(3) Whether the claimed method is not patent-eligible because it is an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under US patent law? and

(5) Whether it is appropriate to reconsider or overrule the leading business-method-patent decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., (Fed. Cir. 1998)?

The State Street Bank case has been held up for the last 10 years as authority for the patentability of software and business methods.  For those watching the business-method-patent and software-patent debate, this is the front line and will impact patent holders in both the US and Canada. 

For related reading, see: US Patent Reform


Calgary – 10:50 MST

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Industrial Design in Canada

untitled.bmpuntitled2.bmpThe Canadian Intellectual Property Office has released some updated tools to assist practicitioners in drafting and filing industrial design applications, including sample drawings.   In Canada, industrial design protects the shape, pattern or ornamentation of a product – anything from the shape and pattern on a common metal spoon, to the design of an in-line skate, to the shape and layout of a handheld digital device.  The design on the left was registered for a telephone in 1917; on the right, a design registered by RIM in 2007.  Once registered, protection lasts for ten years, with a maintenance fee required at the five-year point.

Calgary – 10:45 MST

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Microsoft: Open For Business?

Microsoft announced today that it is embracing certain interoperability principles in connection with its bread-and-butter products such as Windows Vista including the .NET Framework, Windows Server 2008, SQL Server 2008 and Office 2007.  This means making technical specifications and information available to make it easier for third-party software to operate with Microsoft’s products.  Presumably the thinking is that if more third-party products can work with Microsoft software, then this will increase sales for Microsoft.  It does not mean that Microsoft software will be made available under an open source model.

In short, while this will result in lots of headlines that couple the word “Microsoft” with the word “Open”, this does not signal a move by the software giant into open-source territory.  For Microsoft, some form of openness is inevitable – particularly in light of two unavoidable forces: market imperatives (read: Google) that show the success and value of open-source and collaborative technologies; and the decision against Microsoft by the EU’s Court of First Instance last fall, that ordered Microsoft to open up (Judgment of the Court of First Instance in Case T-201/04 Microsoft / Commission).

As part of its announcement, Microsoft has promised not to sue open source developers for “development and non-commercial distribution” of software that draws on these open protocols.  But developers of commercial applications must still come back to Microsoft to obtain a license, on “reasonable and non-discriminatory terms, at low royalty rates”.  It remains to be seen how this will play out with developers in practical terms.  Many developers are understandably skeptical given Microsoft’s antagonistic history with the open source community.  


Calgary – 13:15 MST 


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Article on IP Rights

The Montreal Gazette  interviewed Richard Stobbe, lawyer with the Technology & IP Group, for an article on intellectual property rights in the internet context.  The article also provides an interesting perspective on developments in IP rights in other countries.   

Calgary – 11:45 MST

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Copyright Infringement in Canada

The story of Montrealer Gérémi Adam, who is an alleged copyright pirate, has attracted more attention after the man dropped out of sight on the date of a scheduled court appearance last month.  He did appear in court yesterday to answer the charges and to plead not guilty.  If the case goes to trial it will provide a good test case on what evidence the court will accept as proof that a particular individual posted a particular pirated copy of a movie.  He was charged before Canada’s new anti-camcording law came into effect, so he will face penalties under the previous copyright infringement provisions.  Another Montreal man, Louis-René Haché, was charged under the new anti-camcording legislation enacted last year and his case may provide a test of that law.    

Related reading: Microsoft Scores Software Piracy Win

Calgary – 16:00 MST

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MySpace Nabs UK Domain

The domain name < > was registered in August 1997, fully six years before MySpace, the now-famous social-networking site, was even founded in 2003.  In a recent decision (MySpace, Inc. vs. Total Web Solutions Ltd.)  under the dot-uk domain name rules, MySpace has won a dispute that appears to break new ground.  MySpace was able to convince the decision-maker that it should be entitled to take over the dot-uk domain name, even though the registration occurred before MySpace existed.

Until now, many analysts have agreed that the relevant time to measure whether a domain name was registered in bad faith is the date of registration, not the date of the complaint.  This decision seems to have stepped around that detail, and found that the registration was “abusive” because of what happened since 2005, after MySpace had started establishing an international reputation. 

Maybe the UK registrant should have taken the $430,000 offer that MySpace reportedly put on the table in the negotiations leading up to the complaint.  With the stakes that high, it’s no wonder the losing party has filed an appeal of this decision. 

While this decision is not binding on decision-makers in dot-com or dot-ca dispute procedures, the appeal will be watched closely to see how the consensus is developing on this issue.

Calgary – 10:45 MST


Canadian Trade-mark Battles

If we were to rank intellectual property battles over Canadian culture, last month’s dispute in PEI over the use of the trade-marks surrounding Anne of Green Gables might beat out last year’s domain name fight over Hockey Night in Canada . Third place might go to last year’s trade-mark spat between Tim Horton’s and an American professional bass fisherman by the same name in Muscle Shoals, Alabama. In a rare moment of Canadian cultural imperialism, the coffee-and-donut icon forced Mr. Horton the fisherman to abandon his US trade-mark application for 1 TIM HORTON.

Calgary – 22:32 MST

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Look Out Apple, Here Comes Meizu

There was a time when the words “Made in Japan” were synonymous with cheap, low quality trinkets. Today those words are the hallmark of high-quality electronics. The words “Made in China” are on the same path. From an intellectual property and trade-mark perspective, there are cheap knock-offs – like Mickey-Mouse t-shirts and pirated DVDs. And then there are legitimate, cutting-edge imitators that just might beat the original product in its own backyard.

Case in point: the Meizu M8 or miniOne (the one on the right, if you were wondering) is in the vanguard of made-in-China products that will soon be competing directly against Western technologies like the Apple iPhone (on the left). Not only in the US, Canada and Europe, but perhaps more importantly, in the ballooning consumer markets in China and India.

The miniOne is no slouch in the technology department and it appears to be backed up by its own IP portfolio – Meizu’s patent application in China was laid bare earlier this month (See images from the patent application from the State Intellectual Property Office of the PRC or SIPO). In this arena the game for IP owners is no longer one of trying to squelch cheap knock-offs, but to compete head-to-head, armed with IP protection for patents, trade-marks and copyright, at home and overseas.  And to watch out for the miniOne in a store near you.

Related reading: China’s iClone
Calgary – 11:30 MST

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Fast-Track Canadian Patents

The Canadian Intellectual Property Office has announced its participation in the  Canada-U.S. Patent Prosecution Highway (PPH) pilot project.  This experimental program, which has been in the works for some time, is designed to help fast-track patent examination in both Canada and the U.S. and increase efficiency in the patent examination process. The PPH project is also being used by other intellectual property offices, including the Japan Patent Office, the United Kingdom Intellectual Property Office, and the Korean Intellectual Property Office.  During the initial one-year pilot period, CIPO won’t require a fee to process requests for accelerated examination under the PPH project.


Calgary – 10:45 MST

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