U.S. Supreme Court Decides Bilski; Rules That Business Method Patents Survive

On June 29, 2010, In News, By Natalie Raffoul

The US Supreme Court on June 28, 2010, decided the long-awaited Bilski case, affirming the Federal  Circuit’s judgment. (Bilski v. Kappos, U.S., No. 08-964, 6/28/10).

The US Court ruled that business methods are eligible subject matter under US patent law but declined to accept the US Federal Circuit’s machine-transformation test as the exclusive test for the Section 101 determination.

To summarize, the US Supreme Court decision has the following implications :

a) business methods are patentable subject matter;

b) software is patentable subject matter; and

c) the Federal Circuit’s “machine-or-transformation” test is not the definitive.

While this decision means that it will likely be less difficult to procure software patents, we strongly recommended having claims in your patent application that cover computer systems and/or servers if you have a software aspect to your invention.

Most of the Supreme Court’s opinion (16 pages) is supported by 5 votes, and other parts are supported by only 4 votes.

The following language is supported by a majority of the US Supreme Court:

“Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

“And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method pat-ents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”

To read the full opinion, click here:

http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Please do not hesitate to contact us should you have any questions about the Bilski decision.

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Trade-mark Symbols: ™ and ®

On May 10, 2010, In Trade-mark Tips, By Paula Clancy

As soon as you begin using a trade-mark in commerce, be sure to mark your trade-mark with the ™ symbol.   Anyone who claims rights in a trade-mark may use this symbol, even if the mark has not yet been registered with the Canadian Intellectual Property Office.    Once a trade-mark has been registered, the ® symbol may be used.

The use of trade-mark symbols is not mandatory in Canada, however it is strongly recommended as these symbols provide public notice that you are using a word(s) or design as a trade-mark, or that you have registered your trade-mark.

Keystroke shortcuts for these symbols are as follows:

To create the Trade-mark symbol ™,  hold the Alt key and type 0153.

To create the Registered symbol ®, hold the Alt key and type 0174.

For further information on proper trade-mark symbol use, please do not hesitate to contact us.

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CIPO Withdraws Proposed Practice Notice On “Use and Registration Abroad”

On February 24, 2010, In News, By Paula Clancy

The proposed practice notice entitled “Use and Registration Abroad (s.16(2) of the Trade-marks Act)” has been withdrawn by CIPO.   The proposed practice notice caused concern as it purported to make two significant changes to the application of Section 16(2) of the Trade-marks Act (the “Act”).  First, it stipulated that the Canadian application filing date is the relevant date for establishing use of a mark in a foreign country.  Second, it limited the applicant’s ability to include or complete a Section 16(2) claim to the date of approval for publication, rather than the date of advertisement of the application.

The proposed practice notice appears to have been drafted in response to the Opposition Board decision in Allergan Inc. v. Lancôme Parfums and Beauté & Cie, 64 C.P.R. (4th) 147, which has been interpreted by some as imposing the requirement that a mark must have been used abroad “as of the date of filing in Canada” in order for a Section 16(2) claim to be valid.  However, in the Allergan case the applicant did not file any evidence of use whatsoever,  nor were there any arguments filed with respect to this issue.   The Hearing Officer simply stated that the material date for considering Section 30 grounds of opposition is the filing date of the application.  Therefore, the matter has not been fully analyzed by either the Trademarks Opposition Board or the Federal Court, and the relevant sections of the Act make no mention that foreign use as of the Canadian filing date is a requirement.

If  an Applicant asserts “use and registration abroad” in the original application, it follows that use of the mark must have commenced as of the Canadian filing date.  However, if a Section 16(2) claim is added after filing, or if the applicant asserts a foreign application rather than a registration (and must therefore “perfect” the claim by filing proof that the application proceeded to registration abroad), then arguably use of the mark may occur after the Canadian filing date, or in other words at the time that the foreign “registration” is asserted.

FICPI and IPIC were amongst those who submitted comments with respect to the proposed practice notice.

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