White House pushes for innovation in U.S. patent system

On June 4, 2013, the President of the United States announced seven legislative recommendations to Congress and five executive actions designed to protect innovators from frivolous litigation and to better the quality of patents issued by the United States Patent and Trademarks Office. (The informal Executive Actions differ from Executive Orders in that they are not legally binding and are seen more as a way to signal a policy shift.)

The Executive Actions announced by the White House are as follows:

  1. Identifying the “Real-Party-In-Interest”: the USPTO will begin a rulemaking process to require regular updates to ownership information, specifically designating the parent entity in control of the patent. This is expected to assist defendants in identifying the full extent of the patent portfolio held by a plaintiff, as such information is quite helpful in negotiating settlements.
     
  2. Additional USPTO training on Functional Claims: the USPTO will provide targeted training to examiners and develop strategies to address overly broad claims, especially in the context of software patents.
     
  3. Empowering “Downstream Users”: the USPTO will develop new education and outreach materials to aid those end-users using patented technology who face demands from a possible patent troll for simply using a product as intended. 
     
  4. Expanded Outreach and Study: the White House has acknowledged that engagement with stakeholders (including patent holders, research institutions, consumer advocates, public interest groups and the general public) is very important in ensuring that necessary reforms are identified to ensure that the U.S. patent system is efficient and reliable. The USPTO Edison Scholars Program, which permits academic experts to conduct research on the issues involved in abusive patent litigation, will be expanded.
     
  5. Exclusion Orders: the U.S. Intellectual Property Enforcement Coordinator will launch a review of existing procedures that U.S. Customs and Border Protection and the U.S. International Trade Commission use to evaluate the scope of exclusion orders (orders which prevent the importing of products that infringe patent claims) and work to ensure that the process for enforcement of those orders is transparent, efficient, and effective.

The Legislative Recommendations ask Congress to pursue the following measures (some of which echo the priorities set out above) to protect innovators from frivolous litigation. 

  1.  Require patentees and applicants to disclose the “Real-Party-In-Interest” by requiring the filing of updated ownership information with the USPTO or district court when sending demand letters, among other acts. 
     
  2. Permit more discretion in awarding “costs” to prevailing parties in patent cases. 
     
  3. Expand the USPTO’s “covered business method patent” transitional program to more types of computer-enabled patents, and permit a wider range of challengers to petition for review of issued patents. The program provides faster and cheaper review of covered patents as an alternative to litigation. 
     
  4. Protect consumers by providing them with better legal protection against liability if they are using a patented product “off-the-shelf” and solely for its intended use, and allowing a stay of judicial proceedings against consumers if there is a lawsuit against the vendor, retailer, or manufacturer of a product.
     
  5. Change the standard applied by the International Trade Commission for obtaining injunctive relief in order to enhance consistency in the standards applied by the ITC and district courts. 
     
  6. Initiating steps to incentivize public filing of demand letters so that the public may search them.
     
  7. Ensure the International Trade Commission has the flexibility required to hire judges with a background in administrative law

Commissioner of Patents provides revised examination guidance to patent examiners in view of Amazon.com decision

As a result of the Federal Court’s decision in the infamous Amazon.com case, released October 14, 2010, the Commissioner of Patents has provided revised practice guidelines to Canadian patent examiners in relation to general approaches to examination.

Unfortunately, given that we are currently awaiting a decision on appeal from the Federal Court’s decision, the question begs whether these new guidelines will remain relevant for long.

Federal Court holds "business methods" patentable in Canada in decision over Amazon.com "one click" patent

Geoffrey North

In a decision reminiscent of the recent In re Bilski decision in the U.S., the Federal Court of Canada has found that patents relating to “business methods” can constitute patentable subject matter in the highly anticipated decision of Amazon.com v. The Commissioner of Patents.  In his decision dated October 14, 2010, the Honourable Mr. Justice Michael Phelan discusses differing laws and disparate judicial decisions respecting the patentability of “business method” patents across the globe, and is a necessary read for those wishing to implement a cogent global IP strategy.

Background

The Invention

Amazon.com, Inc. filed Canadian patent application no. 2,246,933 entitled, “Method and system for placing a purchase order via a communications network” (the “’933 application”) on September 11, 1998.  The ‘933 application sets out a method and system which allows a purchaser to place an order for items over the Internet.  This method and system of conducting Internet commerce differs from that known in the art.

In the known system, a server computer may provide an electronic version of a catalogue that lists available items.  A potential purchaser may browse through the catalogue using a browser and select various items that are to be purchased.  This selection is generally based on the “shopping cart” model – when the purchaser selects an item, the server metaphorically adds that item to a shopping cart.  When the purchaser is done selecting items, all the items in the shopping cart are “checked out”, and the server computer system then prompts the user for information to complete the order, including, for instance, the purchaser’s name, credit card number, and shipping address.  The server then typically confirms the order by sending a confirming Web page to the purchaser computer system and schedules shipment of the items.  Although intuitive, this shopping cart model has a downside in that it requires many interactions by the purchaser.  The overhead of confirming the various steps of the ordering process and waiting for, viewing, and updating the purchaser-specific order information can be cumbersome.  Also, each time an order is placed, sensitive information is transmitted over the Internet and is susceptible to being intercepted and decrypted.

In the ‘933 application, however, Amazon.com provides a method and system for single-action ordering of items in a client/server environment that reduces both the number of purchaser interactions needed to place an order and the amount of sensitive information that is transmitted.  In particular, the server system uses a client identifier sent from the purchaser’s computer to associate the purchaser's computer with the purchaser's payment and shipment information (purchaser-specific account information). The server stores the client identifier in the purchaser's computer in a “cookie” when the purchaser enters his identification, billing and shipping information (purchaser-specific account information), usually at the time of the purchaser's first visit. On a subsequent visit to the Web site by the purchaser's computer, the server recognizes the client identifier in the “cookie” as belonging to that purchaser. The purchaser may then browse items, and decide to buy an item by clicking on only one button which sends the request to order the item along with the client identifier. The effect of this single-action is to instantly order the item. The server system will receive the purchase request, automatically retrieve the purchaser's account information (which is now stored in the vendor’s computer system) using the client identifier, and combine the retrieved account information to generate the order. Only one click of the purchaser's mouse is required.  The order is made without the need to “check out” or enter any more information, and as such, no sensitive information is transmitted via the Internet.

The Decision of the Examiner and the Patent Appeal Board

The patent examiner at the Canadian Intellectual Property Office (“CIPO”) rejected the application for being an obvious ordering method and system.  The examiner also alleged that the subject matter of the claims was directed to non-patentable subject matter under section 2 of the Patent Act, R.S.C. 1985, c. P-4, on the basis that the essence of the claimed invention did not fall into one of the categories of “invention” (“any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”).

Having been rejected by the examiner, the ‘933 application was considered by the Patent Appeal Board and the Commissioner of Patents and a decision was rendered on March 5, 2009 (Decision no. 1290).  The Board concluded that the prior art did not disclose performing a single action to instantly order an item as set out in the claims.  They also found there was no suggestion in the prior art to modify a subscription-based shopping model such that with one-click, an identifier (cookie) is sent in conjunction with the product ordering information, thus retrieving purchaser-specific account information, so that the order is instantly placed.  According to the Board, “The advantages of such a streamlined ordering process pointed to by the Applicant are indicative of some ingenuity (or inventive step).”  As a result, the Board disagreed with the examiner and found that the skilled technician would not have been led directly and without difficulty to conceive of what had been claimed in the ‘933 application, i.e. it was not obvious.

The Board, however, agreed with the examiner that the invention was directed to non-statutory subject matter on the basis that the substance of the claimed invention was not technical in nature.  According to the Board, “where the claimed invention, in form or in substance, is neither a physical object (a machine, manufacture or composition of matter) nor an act or series of acts performed by some physical agent upon some physical object to produce in that object some change of either character or condition (art or process), it is not patentable … certain types of subject matter are excluded from patentability in Canada.  A claimed invention which in form or in substance amounts to a business method is excluded from patentability.”  For this broad statement excluding business methods from patentability, the Board relied upon a statement made in obiter by a Justice of the Supreme Court of Canada in reasons dissenting in part from those of the majority in the case of Monsanto Canada Inc. v. Schmeiser, at paragraph 133.  This was a noteworthy stance for the Board to take given that the previous Manual of Patent Office Practice (MOPOP) had stated that business methods were not “automatically excluded from patentability”.  The Board also relied upon statements made by the U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Bilski, 88 USPQ 2d 1385 and decisions in the U.K. to support its position.

The Decision of the Federal Court of Canada

Adoption of International Principles

Justice Phelan noted that this case highlighted the challenges in looking to foreign case law or international legal principles to assist in interpreting the Canadian patent regime: “In an area of the law where advancing human ingenuity often creates novel legal questions to which there may be no immediate answer in Canadian jurisprudence, it can be useful to look to other regimes. However, this must be done mindfully. Despite the international conventions and principles of reciprocity, regimes can be fundamentally different. Something which may be patentable in one country, will not be here, or vice-versa. Also, it may be patentable for an entirely different reason. While international jurisprudence can provide guidance, these cases and the particular Canadian context of the question before the Court (i.e. what is patentable subject matter) must correspond to Canadian law. Some jurisdictions will be more applicable than others given the history, language and prior interpretation of their patent legislation.”

His Honour noted, for instance, that under the English and European systems which implement the European Patent Convention (“EPC”), there is no definition of “invention”, but instead a series of exclusions.  In this respect, Article 52(2)(c) of the EPC specifically states that, “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” shall not be regarded as inventions.  In addition, a review of U.K. case law revealed that the exclusions in the U.K. and European regimes are largely concerned with policy.  In Canada, on the other hand, the Commissioner of Patents has no discretion to refuse a patent on the basis of public policy considerations independent of any express provision in the Act – the Commissioner has to justify any refusal.  International jurisprudence is therefore “at most a potential guide when applied correctly and mindfully” in Canada.

Definition of “art” and “process”

Justice Phelan noted that in Canada it is generally accepted that “method” and “process” are the same thing and that “art” may include either.  There are three important elements in the test for “art”: i) it must not be a disembodied idea but have a method of practical application; ii) it must be a new and inventive method of applying skill and knowledge; and iii) it must have a commercially useful result.  The practical application requirement ensures that something which is a mere idea or discovery is not patented – it must be concrete and tangible. This requires some sort of manifestation or effect or change of character.  However, Justice Phelan noted that it is important to remain focussed on the requirement for practical application rather than merely the physicality of the invention.  One must not “restrict the patentability of practical applications which might, in light of today’s technology, consist of a slightly less conventional ‘change in character’ or effect that [is] through a machine such as a computer.”  While not everything under the sun is patentable, the definition of “invention” in the Patent Act is broad and encompasses “unforeseen and unanticipated technology”.

Application to the ‘933 Application

The Court found that a purposive construction of the “system claims” at issue clearly disclosed a machine which is used to implement Amazon.com’s one-click ordering system.  The described components were found to be essential elements in implementing the on-line ordering process, and not merely a “mathematical formula” which could be carried on without a machine or simply a computer system.  A machine as such is patentable under s. 2 of the Patent Act.

As to the process claims at issue, the Court found they claim an invention which uses stored information and “cookies” to enable customers to order items over the internet simply by clicking on them.  This novel on-line ordering system added to the state of knowledge in this area.  As noted by Justice Phelan:

The new learning or knowledge is not simply a scheme, plan or disembodied idea; it is a practical application of the one-click concept, put into action through the use of cookies, computers, the internet and the customer’s own action. Tangibility is not an issue. The “physical effect”, transformation or change of character resides in the customer manipulating their computer and creating an order. It matters not that the “goods” ordered are not physically changed.
 It is undisputed that this invention has a commercially applicable result and is concerned with trade, industry and commerce. Indeed, its utilization in this very realm seems to be at the root of the Commissioner’s concern. 

In view of the foregoing, Justice Phelan also found the process claims to be patentable as an art or process.  The Court therefore found that the ‘933 application disclosed patentable subject-matter, contrary to the decision of the Commissioner of Patents.  His Honour, however, would not grant a patent as requested by Amazon.com since the Court was not asked to assess the validity of the claims in other respects.  As such, the decision of the Commissioner of Patents was quashed and the application was sent back for expedited re-examination.

As an important aside, it is interesting to point out that Justice Phelan also made the following comments in obiter:

There may be (and the Court is not suggesting that there are) other reasons why the Commissioner might have rejected this patent. One might question the sufficiency of disclosure in the system claims but no one has claimed that it was insufficient. That matter was not considered by the Commissioner.

Subsection 27(3) of the Patent Act states that the specification of an invention must: (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it; (c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.  In accordance with section 84 of the Patent Rules, the claims must be clear and concise and must be fully supported by the description independently of any document referred to in the description.  As such, a person skilled in the art must be able to understand, in view of the specification alone when read in light of their common general knowledge, what the invention is, what it does, and how to make it work.

According to the MOPOP, if the desired result requires a novel and unobvious application of hardware or software, a greater level of detail regarding how this result is to be achieved is necessary.  Computer-implemented inventions are often described in terms of a flow chart that illustrates the algorithm or logic tree on which the operation of the invention is based.  Where the algorithm or logic performed by the computer lies at the heart of the invention, a full description of the algorithm or logic tree must be provided.  Moreover, in order for the person skilled in the art to be able to put each step in the flow chart into operation, the description must be enabling.  That is, the person skilled in the art must be able to do this without recourse to inventive ingenuity or undue experimentation.  The description must therefore provide any information necessary to enable the algorithm to be practiced.  As stated in MOPOP, “Where very little explanation is given regarding how a step in a method is to be implemented by a computer, this will generally be understood as an indication that the applicant, rightly or wrongly, does not consider the implementation of that step to require inventive effort on the part of the person skilled in the art.”

Unfortunately, patent applications regarding computer-implemented inventions are all too often bereft of sufficient disclosure and therefore open to attack.  Applications for computer-implemented inventions should be drafted with a sufficiently detailed description of the hardware, program modules, and data structures involved, along with flow charts describing the algorithms or computer logic used to implement the invention.  If you are wishing to implement a cogent global IP strategy with respect to computer-implemented business method patents, one must be concerned not only with patentability of the subject matter in various jurisdictions, but also with whether the application provides a sufficiently enabling disclosure.

Court holds business methods patentable in Canada

Amazon.com, Inc. v. The Attorney General of Canada, and The Commissioner of Patents   2010 FC 1011

Canada’s Federal Court has released its long awaited decision in the patentability of Amazon.com’s one-click order process.  This was an appeal from the decision of the Commissioner of Patents denying Amazon's patent for a "business method", having found that it was not patentable subject matter under s. 2 of the Patent Act.

The case concerned Amazon.com's simplified "one-step" ordering method and system which uses stored information and "cookies" to enable customers to order items over the internet simply by "clicking on them".   The Court found that the system claims clearly disclose a machine which is used to implement Amazon.com's one-click ordering system and a machine is patentable under s. 2 of the Patent Act.   The Court also found the method, when viewed as a whole, to be patentable as an "art" and a "process" because:


[The method is] not simply a scheme, plan or disembodied idea; it is a practical application of the one-click concept, put into action through the use of cookies, computers, the internet and the customer's own action.   Tangibility is not an issue.   The 'physical effect', transformation or change of character resides in the customer manipulating their computer and creating an order.   It matters not that the 'goods' ordered are not physically changed.

The Court concluded that there is no exclusion for "business methods" in Canada.   Business methods are to be assessed for patentability like any other method.

Edit: a more substantial analysis has been completed.  Please view it here

Bilski applied: The start of the ripple effect

As reported in our April 2008 IP Update, the United States Court of Appeals for the Federal Circuit issued an en banc Order in the spring of 2008 that required the full Court to rehear the appeal of In Re Bernard L. Bilski and Rand A. Warsaw.

In U.S. Court of Appeals practice, an en banc rehearing is typically granted only where a case is considered unusually important.  The U.S. Court of Appeals for the Federal Circuit had expressly raised the possibility of overruling its own prior decisions on business-method patents, namely State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999).

Oral argument in the Bilski case was heard in May 2008, and the eagerly awaited decision was issued on October 30, 2008 [In re Bilski, 545 F. 3d 843 (Fed. Cir. 2008)(en banc)].  The Bilski decision carves back the definition of patentable subject matter in the United States, thereby limiting the types of inventions that may receive patent protection.  The effects of the Bilski decision are just starting to be seen, and in December 2008, the Bilski decision was used to reject claims in a biotechnology patent.  This article sets out a brief history of the rise of the business-method patent in the U.S. after the State Street decision, and then reviews the Bilski decision, and its potential effects on patenting strategies in the U.S. and Canada.

The State Street Case

The 1998 State Street decision, which was reconsidered by the United States Court of Appeals for the Federal Circuit, has been used since that date to support the patenting of claims in respect of the transformation of data by a machine; as well as business methods and software. The decision was controversial from the beginning, with critics pointing to the relative ease of obtaining software patents in the U.S. as compared to other jurisdictions, and the frequent issuance of U.S. patents for non-innovative ways to implement known methods using computers.

Prior to the State Street decision, the United States Patent and Trademark Office (USPTO) did not consider business methods to be patentable. State Street abolished the "business-method exception" to patentable subject matter, and held that business methods could be patentable if they could be applied to produce "a useful, concrete and tangible result" - that is, accomplish a practical application. The business method at issue in State Street was for a computer-based system of pooling mutual funds.

State Street opened the floodgates to business-method patent applications in the United States, resulting in a seven-fold increase in business-method patent application filings from 1998 to 2006. Numerous patents have been granted for business methods, many for internet-based methods ranging from Amazon.com's "one-click" on-line ordering process to Priceline.com's on-line reverse auction for airline tickets. The Bilski decision could affect the validity of scores of patents issued since State Street.

The Bilski Decision

In Bilski, the United States Court of Appeals for the Federal Circuit held that the test for patentable subject matter articulated in State Street was insufficient.  It is now no longer enough for a claimed process to produce a "useful, concrete, and tangible result."  Instead, the majority of the Court articulated a "machine-or-transformation test," which would restrict patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.  Furthermore, "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In other words, use of the machine must play a meaningful role in the claimed method.

The test leaves some areas of ambiguity.  For example, the word "article" has not been defined, and there is no discussion of the level of transformation that might be considered sufficient to meet the test.  Such issues were not required to be resolved in considering the invention at issue in Bilski, which was a "method for managing the consumption risk costs of a commodity."  The patent application described the method of hedging risk as one whereby an intermediate commodity-provider bought a commodity at a fixed price and sold the commodity at another fixed price, thereby protecting the provider from major changes in the demand and price of the commodity.

In rejecting the application, the USPTO noted that the claimed invention was not restricted to performance by machines and/or did not contain any limitation to prevent it from covering a purely mental process by individuals.  The question before the Court in Bilski was whether the Bilski application was attempting to patent a fundamental principle, such as an abstract idea, or a mental process, which are examples of subject matter that had always been considered to be unpatentable.

The Court found that the claimed process "encompasses the exchange of only options, which are simply legal rights to purchase some commodity at a given price in a given time period. The claim only refers to 'transactions' involving the exchange of these legal rights at a 'fixed rate corresponding to a risk position.'"  The Court confirmed that a claimed process where every step may be performed entirely in the human mind is not patentable. Such an exchange of legal rights was held not to qualify as a transformation because the transformed result is neither a physical thing nor a depiction of one. The Court made it clear, however, that the transformation does not require any underlying physical object. For example, generating a particular visual depiction of a physical object on a display using raw data qualifies as a transformation.

The Court also noted that a process involving a "physical step" might still be unpatentable if it does not involve a particular machine or apparatus.  The Court declined to comment on the USPTO's position that a general-purpose computer is not considered a "particular machine," because the claimed process in the Bilski application did not involve any machine, even a computer. Therefore, the Court left for another day the question of whether a process that involves a general computer would suffice.

Dissents

The majority decision in Bilski claims a middle ground between the poles of the dissenting opinions. Judge Mayer, in one dissenting opinion, took a very narrow view of the definition of patentable subject matter, arguing that the majority should have gone further to overrule completely State Street Bank and AT&T v. Excel. According to Judge Mayer, affording patent protection to business methods lacks statutory support and hinders innovation.

Judge Rader and Judge Newman took a much broader approach in their respective dissenting opinions. Judge Rader argued that the majority's decision relies heavily on past Supreme Court judgments that are no longer appropriate in the context of today's technology. In his view, the Federal Circuit unnecessarily and erroneously expanded on the Supreme Court's long-established principle that laws of nature, natural phenomena, and abstract ideas are excluded from patent protection, and Judge Rader was also concerned that the promotion of innovation will be limited as a result.

Judge Newman argued that the majority opinion is contrary to the statute and precedent, and a negation of the constitutional mandate because it "excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways" and that have been patent-eligible in the past.

Bilski Applied

On December 19, 2008, the United States Court of Appeals for the Federal Circuit mechanically applied the Bilski decision in Classen Immunotherapies, Inc. v. Biogen IDEC et al. (Fed. Cir. Dec. 19, 2008), which involved diagnostic claims in the field of life sciences.  The claims at issue covered a "method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals" and a method of determining the optimal immunization schedule. The steps included immunizing mammals and comparing data between the two subject groups. 

The district court ruled that claims to the relationship between the timing of the administration of vaccinations and the development of the disorder are unpatentable because they are claims encompassing a natural phenomenon. The  appellate court affirmed this decision with a terse judgment, which consists (in its entirety) of the following:

In light of our decision in In re Bilski, 545 F.3d 843 (Fed. Cir. 2008) (en banc), we affirm the district court's grant of summary judgment that these claims are invalid under 35 U.S.C. §101. Dr.  Classen's claims are neither "tied to a particular machine or apparatus" nor do they "transform a particular article into a different state or thing." Bilski, 545 F.3d at 954. Therefore we affirm.

The Court provided no additional reasoning or explanation of Bilski, for example, with respect to what "transformation" means. It may be possible that the claim would be patentable if the development of the disorder was visually depicted on a diagnostic computer or if the process was tied to an apparatus in some other way.

A similar issue arises in respect of the invention claimed in Prometheus v. Mayo, which deals with a correlation between the amount of drug metabolite in the body and optimal drug dosage.  This invention was similarly held by the USPTO to be an unpatentable natural phenomenon, and the case is currently pending review by the Federal Circuit. It will be interesting to see whether the Federal Circuit applies Bilski in a similar way as in Classen.

What Next?

In light of Bilski, companies should review their entire U.S. patent portfolio for patents that may now be vulnerable to impeachment by competitors on the grounds that the patents encompass nonpatentable subject matter. Patents issued in the last two years may still be in the window of opportunity that would allow the filing of a reissue-patent application to include additional limitations required by the machine-or-transformation test.

The Bilski decision does not have a significant impact on the drafting of Canadian business method and software patents, because the law in Canada has always been more restrictive in this field than in the United States. Since the 1981 decision of Schlumberger Canada Ltd. v. Commissioner of Patents [(1981) 56 C.P.R. (2d) 204 (FCA)], software-related inventions have been patentable if the new software was coupled with computer hardware, even if the hardware component is nominal. 

Prior to 2005, the Canadian Intellectual Property Office (CIPO) applied a fairly restrictive approach to the Schlumberger decision, holding that computer programs per se are not patentable in Canada, because they are considered to be a mere scientific principle or abstract theorem. However, Canadian patents have been granted for systems and devices that use software.  In one case, the inclusion of a specific piece of conventional computer hardware, namely read-only memory (ROM), was sufficient to render the ROM that stored the novel software program patentable.

Since 2005, CIPO has loosened its interpretation of the Schlumberger decision. CIPO guidelines now state that for a software invention to be patentable, it must be "an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or condition" and "it must produce an essentially economic result in relation to trade, industry or commerce." The requirements of "physical agent" and "change" are aspects similar to the machine-or-transformation test now applied in the United States.

The Bilski case is widely expected to be appealed to the Supreme Court, which may, of course, alter or set aside the Court of Appeals decision. Therefore, this may not be the last we hear of Bilski.