Wednesday, April 27, 2011

Patents claiming a method of doing business - Appeal to be heard in June

As posted earlier, the Federal Court in Amazon v. Canada, 2010 FC 1011 held that a method of doing business (a “business method”) can be patentable subject matter. The Department of Justice on behalf of the Canadian Intellectual Property Office is appealing this decision to the Federal Court of Appeal, in court file A-435-10.

The Court of Appeal has now confirmed that the appeal hearing will be heard in Toronto (not Ottawa as previously reported) on June 21, 2011 at 9:30am. A decision should be rendered before the end of 2011. Depending on the appeal decision, we may see the Supreme Court grant leave to tackle this issue in 2012.

Tuesday, April 19, 2011

The evidentiary standard for challenging US patent validity

Yesterday, the US Supreme Court wrapped up oral arguments for Microsoft Corporation v. i4i Limited Partnership, in which i4i sued Microsoft for patent infringement. This case has attracted worldwide attention, not only because the infringing product (MS Word) is widely used, but also because the Supreme Court's ruling will determine the evidentiary standard to which the validity of all US patents will be determined in the future.

Under 35 U.S.C. § 282, an issued patent is presumed to be valid (in other words, it's assumed to be novel and non-obvious). Since the 1980s, the Court of Appeal has held that this presumption of validity may only be rebutted with evidence meeting a "clear and convincing" standard.

Microsoft, having lost at the trial level and at the Court of Appeal, argues that the "clear and convincing" standard is too high and that the correct standard should be the lower "preponderance of evidence" standard. Microsoft argues that the requirement for "clear and convincing" evidence was a requirement made solely by the Court of Appeal and was not the intent of Congress.

i4i, as the patent holder in this case, argues that maintaining the "clear and convincing" standard is necessary for protecting American innovation and inventors, and that Congress had implicitly endorsed the "clear and convincing" standard forwarded by the Court of Appeal by not enacting a law saying otherwise.

As an added twist, the specific evidence that Microsoft now seeks to introduce in order to argue that i4i's patent is invalid was not previously considered by the US Patent Office during the prosecution of the patent application. Thus, the Supreme Court may end up treating evidence previously considered by the US Patent Office differently than evidence not previously seen by the US Patent Office.

Despite the rhetoric about protecting American innovation, I think a certain amount of deference is due if the evidence introduced was already considered by the Patent Office during prosecution. In my view, the higher "clear and convincing" standard should apply to evidence previously considered during prosecution, while the lower "preponderance of evidence" standard should apply for evidence not previously considered by the Patent Office.

A decision is expected from the US Supreme Court before the end of June 2011. Chief Justice Roberts recused himself, so the case will be decided by the remaining eight justices. If the Supreme Court splits 4-4 then the "clear and convincing" evidentiary standard stands.

Friday, April 15, 2011

Prior art and being the first to file a patent application

If you've heard of patents before you've probably heard of the term prior art. A prior art is generally a public document that demonstrates the state of the art at a particular time.

Since patents are only awarded to an inventor for an invention that's new and inventive over the current state of the art, when you file a patent application you want to know if there's any prior art that can make your patent application not new or not inventive. In Canada, any prior art from a third party that publicly disclosed your invention before you filed your patent application will take away your patent rights because it will make your patent application not new or not inventive.

So what should you do? Before drafting your patent application, a search for prior art should be done to assess the current state of the art. Knowing what kind of prior art is out there means that your patent application can be drafted so that it remains new and inventive over the prior art and increases its chances of being allowed as a patent.