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The FCA Holds Business Methods May be Patentable in Amazon.com Ruling
The Canadian Federal Court of Appeal (FCA) recently delivered its highly awaited decision regarding the Attorney General’s appeal from the Federal Court (FC) ruling on Amazon’s patent application relating to its one-click online shopping method. The FCA decision confirmed that business methods are not necessarily unpatentable, but also cautioned that not every business method can be categorized as falling within the classes of patentable subject-matter described in Section 2 of the Patent Act (the Act) merely because it has a practical application. Unlike the FC judge, the FCA stopped short of holding that the one-click method is patentable and sent the matter back to the Commissioner of Patents (the Commissioner) for re-examination. The Commissioner had rejected Amazon’s claims for not constituting an “art” or “process” within the meaning of Section 2 of the Act, but in an appeal to the FC, Amazon succeeded in obtaining an order that quashed the Commissioner’s decision.
The FCA agreed with the lower court ruling in respect of the test for patentable subject matter and the requirement for using purposive construction in assessing patent claims. Both courts rejected the Commissioner’s argument that the issue of patentable subject matter is independent of patent construction and warned against the use of vague tag words such as “technological” in determining whether a claimed invention falls within the classes of patentable subject matter. The Commissioner’s restricted view of what constitutes a “change in physical character of or condition of a physical object” was also rejected by both courts. However, the FCA found that the lower court judge went too far in substituting his own purposive construction of the patent claims for the Commissioner’s. Accordingly, the FCA sent the matter back for re-examination based on the full record before the Commissioner.
So far, Amazon has succeeded in patenting the one-click method in the US, Australia, and New Zealand. Whether or not it can obtain a patent in Canada remains to be seen, but what is clear is that the Commissioner must now review the claims “with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim”. While the FCA did not make a determination as to whether the one-click method is an abstract theorem and thus incapable of being patented under s. 27(8) of the Act, the statement that the method may be “an essential element of a valid patent” can be interpreted as suggesting that the one-click method is, in and of itself, considered an abstract theorem or idea.
For a copy of the decision (Federal Court of Appeal), please visit:
http://decisions.fca-caf.gc.ca/en/2011/2011fca328/2011fca328.html