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CCCA_V6No1_Dept-IntelProperty-FIN_CCCA_V5No3_Dept-IntellectualProperty-V1.qxd 2/13/12 8:37 PM Page 12 Intellectual Property Can a novel business method be patented? The Amazon decision By Ron Faggetter n patent circles in Canada, patentability in Canada”. IAmazon.com’s efforts to obtain a The FC was of the view the patent directed to one-click shopping Supreme Court of Canada has caused quite a stir. Our courts are (SCC) had clearly directed that finally facing head-on the question of any claim analysis be based on a whether business methods are proper purposive construction of the subject matter for a patent in Canada. claims. The FC concluded that: Two provisions of Canada’s Patent Act are relevant: section 2, which defines an inven- A purposive construction of tion as including any new and useful art, the “system claims”… clearly disclos- Federal Court of Appeal (FCA) also disap- process, or machine and section 27(8), which es a machine which is used to imple- proved of the analytical approach taken by states that no patent shall be granted for any ment Amazon.com’s one-click order- the Patent Office and also considered that mere scientific principle or abstract theorem. ing system. The described compo- the proper approach to assess statutory sub- The Patent Office had considered that a nents (e.g. a computer) are essential ject matter was to identify the actual inven- claimed invention would not be patentable elements in implementing an online tion by purposively construing the claims. if what makes it new and unobvious is ordering process. This is not merely “a Moreover, the FCA specifically comment- non-statutory subject matter. In its view, mathematical formula” which could ed that the Patent Office should be “open what made Amazon.com’s claimed inven- be carried on without a machine or to the possibility that a novel business tion new and unobvious was a method to simply a computer program.A method may be an essential element of a streamline on-line ordering. However, the machine is patentable under s. 2 of the valid patent claim”. Patent Office decided that this subject Patent Act.… The Court therefore Unlike the FC, the FCA was not pre- matter (i) did not fit within the definition finds the machine claims to be pared to construe the claims for the reason of “invention” in s. 2 of the Patent Act patentable subject matter. that, generally, a Court should not construe because it was not an “art”, (ii) was a busi- claims absent expert evidence, and the ness method and, in the view of the Office, Turning to the process claims, the FCA did not have the benefit of such evi- business methods have traditionally been Commissioner clearly erred by “pars- dence. The FCA therefore referred the excluded in Canada, and (iii) was not ing” the claims into their novel and matter back to the Patent Office to con- “technological” in nature, which the obvious elements in order to assess strue the claims with the assistance “of sub- Patent Office considered was another patentability. When viewed as a whole missions from the patent applicant and … requirement for a patentable invention. it is clear that the claimed invention is from staff at the Patent Office with the On appeal (Amazon.com v. A-G of a process which uses stored informa- appropriate experience”. Canada and the COP 2010 FC 1011), the tion and ‘cookies’ to enable customers The Patent Office acted quickly on this Federal Court (FC) completely disagreed to order items over the internet sim- mandate and allowed Amazon.com’s appli- with this framework for analysis and ply by ‘clicking on them’. cation (The January 23, 2012, deadline to expressly stated “[t]here is no basis for the seek leave to appeal the decision of the … assumption that there is a ‘tradition’ of On further appeal (A-G of Canada and FCA to the Supreme Court passed with- ISTOCKPHOTO excluding business methods from the COP v. Amazon.com 2011 FCA 328), the out a leave application being filed). 12 CCCA Canadian Corporate Counsel Association SPRING 2012