On July 26, 2023, the Federal Court of Appeal decided the Benjamin Moore decision relating to computer implemented inventions. Please read my full comments in the Articles section of this website.
Technology and Patents
I am available for advice and representation on patent matters, particularly on the contentious areas of subject matter eligibility either in the computer or life sciences space. I am registered to practice in the patent office of Canada and the United States since 1980 and I have navigated my way through many patent office objections and court challenges. I have particular expertise in technology development for start-up companies. I represented Queens University and Parteq Inc (the technology transfer arm of Queens) in licensing and litigation matters for many years and helped achieve a significant multimillion dollar settlement for Queens University based on a patented drug developed there. Later I sat on the board of Parteq to assist in the evaluation, licensing and creation of new companies based on Queens University technology. I also advised Allelix, one of Canada’s first biotechnology companies in licensing and explointing their technology I have also represented some of the largest technology companies. I was counsel to Nortel Networks Inc. and affiliates in their record-breaking auction of around 7,000 patent assets to Rockstar Bidco, a consortium of Apple, EMC, Ericsson, Microsoft, Research in Motion and Sony for $4.5 billion. Also counsel to Nortel in several other significant sales of multiple Nortel divisions with critical IP assets including Genband, Ericsson and Avaya. I also advised a large Canadian mobile phone matter in a prominent dispute in the United States. I represented eBay as intervener in the Supreme Court of Canada on the Equustek v. Google case involving the court order of a worldwide injunction against Google. I acted for the Canadian Banking Association and the Canadian Life and Health Insurance Association as intervener in Amazon v. the Commissioner of Patents, the seminal and still leading Canadian case on the patentability of business methods. I represented the Bank of Nova Scotia in a multimillion dollar Canadian and US patent claim by Data Treasury concerning cheque scanning and processing. I can assist either with litigation advice (see dispute resolution section) or transactional advice in this sector.
I intervened in the Federal Court of Appeal in the case of Benjamin Morre v. The Attorney General of Canada. I argued on behalf of The Canadian Health and LIfe Insurance Association and Insurance Bureau of Canada. The case concerned a new test that had been advanced by the Intelectual Property Institute in Canada and adopted by the trial division. If confirmed, this new test would considerably expand the patenting of business methods and remove restrictions on such patents such as those that exist in other countries such as the US and the EU.
On October 2, 2020, I moderated a panel at the Intellectual Property Institute of Canada (IPIC) on Patenting Computer Related Inventions. This panel discusssed developments in Canada and the U.S. including the new Choueifaty decision in Canada. Panelists were Hugh Mansfield at Lavery and Jerry Selinger at Patterson Sheridan.
In 2020, the Federal Court of Canada decided an important case on subject matter eligibility of computer implemented inventions: Choueifaty v. Attorney General of Canada 2020FC 837. Briefly I explain why the decision in Choueifaty is at least analytically wrong, although I take no position, at this time, as to whether the case was correctly decided as to subject matter eligibility, only that it was decided for the wrong reasons.
In May 2017 I reported on the trial decision of Mr. Justice Russell, in The Governors of the University of Alberta and Alberta Health Services v.