Cdn. Federal Court of Appeal releases tentative Amazon decision
Amazon’s 1-click patent application survives to fight another day. In a 35-page decision (PDF via ippractice.ca) penned by Justice Sharlow, three members of the appeals court yesterday largely affirmed the trial judge’s legal analysis on patentable subject matter (but not his construction of the patent for want of expert evidence), and ordered that the 1-click application be sent back to the patent office for re-evaluation.
On first blush, this is a big win for Amazon and an endorsement of the lower court’s judgment on the matter. However, it would appear that the appeals court has muddied the waters somewhat by sending the application back to the same agency that rejected it previously and by stating that patentability remains an “open question” and that the Commissioner’s rejection was not necessarily “wrong in the result”.
An appeal to the Supreme Court of Canada is very likely given that Amazon and the Patent Office continue to have very different ideas about the appropriate analysis for patentable subject matter.
On the question of patentable subject matter, the appeals court said:
- if a patent claim as “purposively” construed describes something that is outside the enumerated categories of “invention” in the Patent Act, then it must be refused;
- solely determining the “inventive concept” is not the correct analysis (but the court later mused that the only “inventive aspect” in an old computerized method case was an unpatentable algorithm);
- with regard to the categories of “art” and “process”, the subject matter need not be “technological” or “scientific” as these tag words are not grounded in the Patent Act;
- on a purposive construction, a novel business method may be an essential element of a valid patent claim;
- patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change; and
- a mere “practical application” of an invention is not sufficient: it is axiomatic that a business method has practical application.
As noted above, the appeals court remanded the patent application back to the Patent Office for expedited re-examination, presumably starting with a new purposive construction.
It will be interesting to see whether the Patent Office will deny the patent and therefore, in all likelihood, push the litigation into a further appeal. Many practitioners watching this case would welcome a final resolution to this case and to the continued uncertainty regarding business method patents in Canada.
Update: on December 23, 2011, Amazon received an early Christmas present from the Canadian Patent Office. The 1-click application was allowed, with the final fee paid on December 28, 2011. The patent is expected to be issued on or about January 17, 2012. With an appeal to the Supreme Court now moot, the Federal Court of Appeal’s decision is now the final say on business method patentability in Canada.
