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Amazon ruling by Canadian Federal Court on 14 October 2010

Revision as of 13:30, 3 November 2010 by Ciaran (talk | contribs) (Key excerpts: more)
See: the decision (37 pages, PDF)

Amazon v. Commissioner for Patents is a Canadian appeal which ruled that Amazon's one-click shopping patent could be patent eligible. This case sets important precedent because it was decided based on whether or not this sort of business method constitutes patentable subject matter in Canada.

Amazon's application was filled on 11 September 1998 as a "Method And System For Placing A Purchase Order Via A Communication Network". The patent has 75 claims, a mix of "method" claims and "system" claims.

Key excerpts

[1] This is an appeal of a decision by the Commissioner of Patents to deny the Appellant’s patent for a “business method”, having found that it was not patentable subject matter under s. 2 of the Patent Act, R.S.C. 1985, c. P-4 (Patent Act).

[61] There is no basis for the Commissioner’s assumption that there is a “tradition” of excluding business methods from patentability in Canada. The only Canadian jurisprudence cited was made as obiter and in dissent by Arbour J. in Schmeiser.

[78] The absolute lack of authority in Canada for a “business method exclusion” and the questionable interpretation of legal authorities in support of the Commissioner’s approach to assessing subject matters underline the policy driven nature of her decision. It appears as if this was a “test case” by which to assess this policy, rather than an application of the law to the patent at issue.

So, the patent isn't granted, but the patent office was wrong to reject it based on subject matter. The application will now be re-examined to see if it meet the other criteria (obviousness, sufficient disclosure, etc.) but the patent office now has to presume that the subject matter requirement is met.

[79] There may be (and the Court is not suggesting that there are) other reasons why the Commissioner might have rejected this patent. [...]
[...]
[82] [...] The Commissioner’s decision is quashed and is to be sent back for expedited re-examination with the direction that the claims constitute patentable subject matter to be assessed in a manner consistent with these Reasons.

In terms of setting precedent, the approval or rejection of the patent application at this point isn't important. The core issue is that, unfortunately, the Canadian court has ruled that this sort of patents (patents on this category of idea) can be patented.

Further, the Commissioner for Patents already found the application to be "novel and non-obvious", so there isn't much ground left for rejecting the application.

External links