On September 3, 2009, Amazon.com filed an appeal to the Federal
Court in respect of the decision of the Commissioner of Patents to
refuse to grant a patent pursuant to Canadian Patent Application
No. 2,246,933 (the '933 Application).
The '933 Application involved the use of "cookies"
(which save an IP address and personal information) to allow an
Internet shopper to click just once to purchase an item of
interest. Amazon.com claimed that their cookies were a new and
non-obvious method to hasten and simplify online ordering. The
Examiner had initially rejected the application on the grounds that
the claimed invention was obvious (and therefore not inventive) and
also that the application sought to patent unpatentable subject
matter.
This rejection was appealed to the Canada Patent Appeal Board (the
Board). On March 5, 2009, the Board issued a surprising decision.
While the Board found that the claimed invention was not obvious,
the Board rejected the application, stating that: "concepts or
rules for the more efficient conduct of online ordering, are
methods of doing business. Even if these concepts or rules are
novel, ingenious and useful, they are still unpatentable because
they are business methods."
The Board concluded that subject matter that is not
"technological" is non-statutory subject matter.
Amazon.com's invention, in substance, was not considered
technological in nature and did not bestow a technological
advantage, and the form of the claims was directed to a method for
the purchase of goods, which is non-statutory subject matter.
The Board held that in order for an "art" or
"process" to be patentable, it must "cause a change
in the character or condition of some physical object".
According to the Board, the one-click invention merely confers a
change to the ordering process rather than a change to the products
offered for sale.
Not surprisingly, Amazon.com's appeal to the Federal Court
alleges that the Board erred in making these determinations. The
Federal Court's decision in this matter will have a significant
effect on patent practice in Canada. In the meantime, however, it
is interesting to note that the current Manual of Patent Office
Practice (MOPOP) does not specifically deny patent protection for
business methods.
That said, proposed revisions to the MOPOP regarding subject matter
and utility closely follow the reasoning of the Board in the
Amazon.com case. The proposed revised subsection 12.04.01 states
that the "examination of claims is performed from the
perspective of both form and substance, and the requirement that an
invention relate to a field of technology may, as appropriate, be
evaluated in respect of both the form and substance of a
claim." "Technology" is defined as "the
application of scientific knowledge for practical purposes,
especially in industry"; "machinery and equipment
developed from scientific knowledge"; and "the branch of
knowledge dealing with engineering or applied sciences."
The coming year will be very interesting, as both the Canadian
Federal Court and the U.S. Supreme Court address the patentability
of business methods.
[For a detailed discussion of the U.S. issues, please see Stikeman
Elliott's
January 2009 Intellectual Property Update.]
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.