25 November 2010

Amazon's Canadian "One-Click" Patent Appealed by Attorney General of Canada

As reported in this post, the Federal Court of Canada issued its Amazon.com vs. Canada appeal decision on 14 October 2010 and ruled that Amazon's so called "1-click" e-commerce patent comprises patentable subject-matter, since a business method can be patented according to Canadian law if a practical embodiment is defined by the claims. In this regard, the Court found Amazon's invention qualifying for "art" under the Canadian Patent Act because
  1. the system claims require a machine as an essential element of the invention and 
  2. the method claims are "put into action through the use of cookies, computers, the internet and the customer’s own action" and result in a "physical effect" on those elements.
The Commissioner of Patents' decision on appeal of 2009 was thus reveresed and the case was remanded to the Patent Office for "expedited re-examination".

Now things get in motion again, since on 15 November 2010 the Attorney General of Canada (Minister of Justice Rob Nicholson) and the Commissioner of Patents filed a Notice of Appeal against the decision. The Grounds of Appeal involve that the Judge (Justice Phelan) "erred in fact and law" in finding that the claims of the 1-click application constitute patentable subject matter, in particular:
  1. The Judge erred in law in his interpretation of the definition of "invention" in that
    1. he erred in contruing the terms "art" and "process" so broadly as to include the 1-click invention as definde by the method claims;
    2. he erred in finding that the terms "art" and "process" are not limited to an act or a series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or condition;
    3. he erred in construing the term "machine" so broadly as to include the 1-click invention as definde by the system claims;
    4. he erred in finding that an "invention" as defined the Patent Act need not display a technological aspect.  

  2. The Judge erred in fact and in law in his characterisation of the 1-click invention for the purpose of determining whether it fell within the definition on "invention" as defined in the Patent Act, in that:
    1. he erred in rejecting the "form and substance" approach used for that purpose by the Commissioner of Patents;
    2. he erred in not properly applying the "what has been discovered" approach as described in binding jurisprudence;
    3. he erred in characterising the 1-click invention, as defined by the method claims, such that if fell within the scope of the terms "art" and "process", as used in the defintion of "invention" in the Patent Act;
    4. He erred in characterising the 1-click invention, as defined by the system claims, such that if fell within the scope of the terms "machine", as used in the defintion of "invention" in the Patent Act.
We shall wait and see - and regularly observe the blogoshere. 

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