Update:The Commissioner of Patents has recently filed an Appeal against the Federal Court’s recent Amazon decision, arguing that the court erred in fact and in law in finding that Amazon’s claims constitute patentable subject matter. In particular, the Commissioner contests the majority of the court’s findings with respect to the validity of her original approach in assessing patentable subject matter. The Commissioner does NOT however question the Court’s finding that there is simply no tradition of excluding business methods from patentability in Canada.
The much anticipated decision rendered by the Federal Court of Canada October 14, 2010 in respect of Amazon’s infamous “One-Click” patent application has brought great relief to patent practitioners and applicants alike who support the issuance of business-related patents in Canada. A series of ill-supported revisions to Canadian practice, imposed by the Canadian Intellectual Property Office in light of an earlier decision by the Commissioner of Patents on the matter, had practically put the practice on its head. The pendulum has swung once again, however; as the Federal Court blatantly put it last week: ‘[t]he misapprhension of the Commissioner and the Examiner as to the subject-matter in these claims is a fundamental error of law.’ The decision further reinforced the position for business-related patentees in Canada, acknowledging ‘[t]he absolute lack of authority in Canada for a “business method exclusion”’ and stating that ‘a “business method” can be patented in appropriate circumstances.’
For those less familiar with this case, the claims at issue were directed to a process and system for online shopping, whereby online shoppers whom had previously registered with a Website could benefit from an accelerated “one-click” purchasing mechanism enabled by associating a unique customer identifier, such as an electronic “cookie”, with stored customer-related purchasing information accessible to the system. The Commissioner argued in her decision that both the process and system claims, while novel and inventive, were directed to non-statutory subject matter under Section 2 of the Patent Act.
The Federal Court took aim at the Commissioner’s four-step approach in rendering her decision, as outlined below.
In light of the above, the Appeal was granted and the Application was sent back for expedited re-examination with the direction that the claims constitute patentable subject matter.
Clearly, for the rest of us, the door is reopened for the pursuit of business-related patent protection in Canada. As reaffirmed in this decision, not all under the sun is patentable, however, under the right circumstances, patent protection for claims directed to a business-related method, process or system may once again be pursued to allowance in Canada.
If you have any questions on the above, or wish to discuss how this decision may affect your or your client’s options in pursuing patent protection in Canada, please do not hesitate to contact us and we will be pleased to assist you.