December 22, 2010

The Commissioner of Patents has given notice of her appeal of the Federal Court's recent "One Click" decision.  We previously reported on the Federal Court's October 14, 2010 decision (2010 FC 1011) to quash the Commissioner of Patents' refusal to grant Amazon.com a patent in respect of Canadian Patent Application No. 2,246,933 (the "Application"), and to overturn the Commissioner's findings that the claimed "business method" was not statutory subject matter, instead sending the matter back to the Commissioner for re-examination with the direction that the Application's claims constitute patentable subject-matter. That decision and the recent decision of the United States Supreme Court in Bilski v. Kappos, 561 U. S. ____ (2010), had made it clear that business method patents could be obtained in a few key jurisdictions, including Canada. 

Recently, on November 15, 2010, the Attorney General of Canada and the Commissioner of Patents filed a Notice of Appeal (A-435-10) against Amazon.com. They argue that the Honourable Mr. Justice Phelan erred in fact and in law in finding that the claims of the Application constitute patentable subject matter. Particularly, they disagree with the Honourable Mr. Justice Phelan's interpretation of the definition of "invention" and in his characterization of the "Applicant's invention" for the purpose of determining whether it fell within the definition of "invention".

In particular, they argue that the Honourable Mr. Justice Phelan erred in (a) construing the terms "art" and "process" so broadly as to include the "Applicant's invention", as defined by the method claims of the Application, (b) finding that the terms "art" and "process" are not limited to an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or condition, (c) construing the term "machine" so broadly as to include the "Applicant's invention", as defined by the system claims of the Application, and (d) finding that an "invention" need not display a technological aspect.

Furthermore, they argue that the Honourable Mr. Justice Phelan erred in (a) rejecting the "form and substance" approach used by the Commissioner of Patents for the purpose of determining whether the "Applicant's invention" fell within the definition of "invention", and (b) not properly applying the "what has been discovered" approach, as described in binding jurisprudence, arguably including Schlumberger Canada Ltd. v. Commissioner of Patents [1982] 1 F.C. 845 (C.A.) and Shell Oil Co. v. Canada (Commissioner of Patents), [1982] 2 S.C.R. 536, for that purpose.

A hearing in the Federal Court of Appeal can be expected in the spring of 2011. The decision on the appeal should follow later in 2011.

For more information, please refer to our bulletin entitled One-Click Has Its Day In (Canadian) Court published in October 2010.