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Ashley Dumouchel Shapiro Cohen

Less than two months aſter the much anticipated decision of the Federal Court of Appeal (FCA) in Canada (Attorney General) v, Inc, Amazon. com’s patent application for its ‘one-click’ business method invention has been allowed by the Canadian Intellectual Property Office, and issued on January 17, 2012.

Judicial history’s ‘one-click’ patent essentially claims a client-server system that permits storage of customer information in a ‘cookie’ on a customer’s computer, and allows subsequent purchases to be completed with a single mouse click.

Te Commissioner of Patents rejected the application, finding that the claimed subject matter did not fall within the meaning of ‘invention’ as defined in the Patent Act. Te commissioner reasoned that what was claimed failed three tests considered to be implicit in the act: it did not add anything technological in nature to human knowledge; it was merely a business method and business methods are, per se, unpatentable; and it did not cause a change in the character or condition of a physical object.

At the Federal Court level, the commissioner’s decision was quashed, and the court effectively directed that the patent be issued. On appeal, the FCA directed the commissioner to re-examine the application based on the principles expressed in its decision, as opposed to allowing the application outright.

Purposive claim construction Te FCA confirmed that a ‘purposive’ claim construction must be undertaken when determining the validity of a patent. Subject matter “cannot be determined solely on the basis of a literal reading of the patent claims, or a determination of the ‘substance of the invention’”. Instead, the language of the claims must be purposively construed to determine whether the subject matter is new, useful and non-obvious, and falls within the statutory definition of ‘invention’.

Te court emphasised the importance of relevant evidence in the claim construction analysis. In finding that it was inappropriate for the lower court judge to construe the claims on the basis of the available records, the FCA stated that claim construction must be undertaken “on the basis of a foundation of knowledge about the relevant art, and in particular about the state of the relevant art at the relevant time”. Without the benefit of expert assistance, the court is limited to a literal and uninformed interpretation of the claims.

No per se prohibition against ‘business method’ patents Te FCA affirmed that business methods are not automatically excluded from patentability. While the Patent Act prohibits the granting of a patent for a “mere scientific principle or abstract theorem”, and implicit in this statement


is a ‘physicality requirement’, the FCA instructed the patent office to remain “open to the possibility that a novel business method may be an essential element of a valid patent claim”. Te court cautioned, however, that a business method that is not patentable because it is an abstract idea does not become patentable merely because it has a practical embodiment or application. Further, the ‘technological’ requirement applied by the commissioner should not be used as a “stand-alone basis for distinguishing patentable from non- patentable subject matter”.

In the result, the court did not set out explicitly what is needed to make a business method patentable; only that having a practical application and being ‘technological’ in nature will not necessarily make it so.

Impact on Canadian patent law While providing some guidance regarding both the appropriate analytical framework to be used in assessing claims for patent eligibility and the boundaries of statutory subject matter, the court leſt unanswered many practical questions that will require further direction from the courts and the patent office.

Te now-issued patent may provide insight into the type and scope of claims that may be allowed in the future. However, the court has leſt open the possibility that a purposive construction of claims may be used to reject a business method application, on the basis that deceptive language has been used to frame unpatentable subject matter in a way that would appear to be a claim for patentable subject matter. Te vagueness of the criteria that will be required to make a business method patentable only adds to the uncertainty.

Ashley Dumouchel is an associate lawyer with Shapiro Cohen. She can be contacted at:

World Intellectual Property Review January/February 2012 69

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