Patentable Subject Matter
Assessing whether subject-matter is statutory requires a determination as to
whether: the invention (1) falls within the statutory definition of “invention”
provided by the Patent Act; (2) is not within a class of subject-matter that is
specifically excluded by the Patent Act; and (3) is not otherwise excluded by
operation of judicial interpretation of the Patent Act.
August 14, 2023
2023 FCA 168: In its long-awaited decision, the FCA reiterated the importance of judicial minimalism and rejected a structured analytical framework.
June 20, 2022
2022 FC 923: For the third time since 2011, CIPO’s approach to software patent eligibility has been struck down by the Federal Court.
March 7, 2022
Travel Sentry, Inc. v David A. Tropp, No. 2021-1908 (Fed. Cir., Feb. 14, 2022). The patents claimed an economic practice and method of organizing human activity, which is not subject-matter that can be protected under the patent system.
November 15, 2021
2021 CACP 42: Cementing its post-Choueifaty approach to patentable subject-matter in Canada, the PAB found all claimed elements to be essential in the computer-implemented invention.
November 2, 2021
Fed. Cir. No. 2020-2044: The Federal Circuit found that the patents were directed to an abstract idea, with no additional elements to transform them into patentable subject-matter.
July 7, 2021
Fed. Cir. No. 2020-1760: The CAFC sided with Apple and Samsung, finding a patent for an “improved” digital camera to be an abstract idea and not patent-eligible subject matter.
June 7, 2021
2021 CACP 9, 2021 CACP 12: In two recent decisions involving software patents, the Patent Appeal Board found the inventions to be directed to patentable subject-matter
February 16, 2021
PAB 1556: Canada’s Patent Appeal Board reconsidered Mr. Choueifaty’s patent application for a computer-implemented method of managing portfolio assets.
November 2, 2020
Andrew Currier and Stephen Perry review best practices for drafting software patents to global standards and propose a new test for examining software inventions in Canada.
September 23, 2020
2020 FC 837: A recent decision spells the end to the problem-solution approach, which has long been used to block patent applications for software.
August 10, 2020
Fed. Cir. 2019-2041 - The CAFC held that Packet Intelligence was precluded from claiming $3.5M in pre-suit damages because the marking requirement was not met.
December 9, 2019
Is patenting blockchain possible? Do patents detract from the decentralization of blockchain? This article explains the ins and outs of blockchain patents.
October 11, 2019
CAFC 2018-1763 – In fiercely dissented decision, a top US court has invalidated an automotive patent, further extending the reach of the controversial §101.
August 23, 2019
A draft bill released May 22nd proposes significant reforms to section 101 of the US Patent Act. Businesses should be aware of the commercial impact.
June 11, 2019
AVX Corporation v Presidio Components (Fed. Cir., 2018-1106) A case recently dismissed by the United States Court of Appeals for the Federal Circuit (“CAFC”) confirms that […]
April 30, 2019
Fed. Cir. 2017-2257 - CAFC Reaffirms: GUI That Merely Collects and Displays Data Is Not Patentable
April 3, 2019
Hikma Pharmaceuticals v. Vanda Pharmaceuticals, SCOTUS Docket No. 18-817 - The beginning of the end for method of treatment patents?
November 23, 2018
PAB 1453 – The Patent Appeal Board found that Canadian Patent Application No. 2,612,950 for a “system and method for generating real-time indicators in a trading list or portfolio” was obvious, the claims did not define statutory subject matter and were indefinite.
January 9, 2018
PAB 1420 - Canadian Patent Application No. 2,529,210 filed by Assurant Inc. for a system that routes customer calls based on a sales agent’s past performance was rejected by the Patent Appeal Board, at least for the reasons of non-statutory subject matter and obviousness.
October 17, 2017
2016 U.S. App. LEXIS 8699 (Fed. Cir. 2016) - The US CAFC reversed the decision of a district court in part, finding that the claims in a software patent were patent-eligible, and reversed the finding that the claims were anticipated, but affirmed the district court’s decision that there was no infringement.