Canadian Lawyer

October 2010

The most widely read magazine for Canadian lawyers

Issue link: https://digital.canadianlawyermag.com/i/50837

Contents of this Issue

Navigation

Page 44 of 55

LEGAL REPOR T: INTELLECTUAL PROPERT Y The future of patents Amazon.com case in Canada will likely have more of an effect on business-method patents than U.S. decision in Bilski. BY PAUL BRENT T he Supreme Court of the United States' long-awaited and highly antici- pated decision in Bilski v. Kappos was, for patent and IP lawyers, their version of the Super Bowl. But just as American football's premier event so often turns out to be, Bilski was something of a let- down when it finally happened. "Some people called it the case of a lifetime," says Alex Abecassis, a patent agent and partner with Fasken Martineau DuMoulin LLP in Montreal who specializes in software innovations. "Everyone was very anxious at getting the result . . . and there was a lot of a disappointment with the decision." Widely followed by intellectual prop- erty professionals internationally, the SCOTUS decision in Bilski concerned a patent application for a business method of risk management in financial markets, specifically a way of hedging risk when trading commodities, in this case energy. The court had to wrestle with just what can be patented today and in the future as innovations become more information- based and less machine-based as society continues to move to the information age. It kept the door open for business-method patents without creating any new tests to evaluate future patents. The court appeared to acknowledge the disappointment its decision would gener- ate when so much innovation was coming in areas such as information technology and biotechnology. "This age puts the pos- sibility of innovation in the hands of more people and raises new difficulties for pat- ent law," wrote Justice Anthony Kennedy. "The patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discov- er by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck." Reaction to the June 28 decision fol- lowing nearly a seven-month wait was often harsh: "The landscape of patent law has been a cluttered, dangerous mess for almost two decades," says Eben Moglen, chairman of the U.S.-based Software Freedom Law Center. "The confusion and uncertainty behind today's ruling guar- antees that the issues involved in Bilski v. Kappos will have to return to the Supreme Court after much money has been wasted and much innovation obstructed." While not the final word on business- method patents, Bilski has far-reaching implications. Perhaps the most significant decision on the court's part was declaring that the "machine or transformation" test should not be the sole test for determining whether an invention is patentable subject matter. "[T]he Supreme Court has kicked open the door and will not allow it to be closed on new technologies and innova- tions that we cannot today imagine," states Gene Quinn, a lawyer and president of Virginia-based IPWatchdog Inc. The U.S. Court of Appeals for the Federal Circuit stated in an earlier ruling that the "machine or transformation" test was the only test to apply when deciding whether a method claim was patentable. Simply put, the test involved determining whether the invention is tied to a machine www. C ANADIAN Law ye rmag.com OC T O BER 2010 45 VICTOR GAD

Articles in this issue

Links on this page

Archives of this issue

view archives of Canadian Lawyer - October 2010