- 7 years ago

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The Canadian version of Amazon.com‘s “one-click” patent application (Canadian Patent Application No. 2,246,933) was rejected by the Patent Appeal Board earlier this year with little fanfare. It is commonly referred as at the “one-click” patent because it relates to making online purchases with a single mouse click. This current lack of fanfare could change, however, because the decision could have far reaching consequences for many patent applications in Canada. In fact, it appears that the Canadian Patent Office may already be considering changing how they examine certain types of patent applications as a result of this decision.

At first glance this rejection is interesting simply because of the patent application’s owner, Amazon.com Inc., and the notoriety of the U.S. version of this patent application. The U.S. version of the one-click patent received its fair share of media attention several years ago, especially after Amazon.com used the patent to bring a patent infringement lawsuit against Barnes & Noble. A grass roots movement started up (mainly over the Internet) questioning the validity of the application and the application was subsequently re-examined by the US Patent Office. In comparison, the Canadian application has been quietly flying beneath the radar in its decade long examination. In fact, even though I have been drafting and prosecuting software patents for years in Canada, I was completely unaware that Amazon had a one-click patent application pending in Canada all of this time.

However, putting aside its connection to Amazon and its links to the infamous US one-click patent, this decision is also of interest to anyone who has or could be considering filing software patents applications in Canada. In making its decision to reject Amazon.com’s patent application, the Board made strong statements against the patentability of “business-method patents” in Canada. In addition to rejecting the application because it was obvious in light of the prior art, the Board also found that the application was directed to non-statutory patent matter and stated that “business methods are excluded subject matter and are unpatentable in Canada”. This means that even if the application would have been directed to an inventive method or device, it still would not have been considered patentable. This and other similar statements seem to be at odds with early decisions made by the Patent Appeal Board, which many people in the patent profession have interpreted as being favourable towards business method patents.

Business method patents have been subjected to controversy for years. However, what exactly qualifies as a business method patent is often unclear and the Board’s decision in this case does not appear to provide a clear definition of what a “business method” is. The Canadian Patent Office does seem to recognize that there is a difference between patent applications directed to “business methods” and patent applications directed to “computer-implemented inventions”, but where this line meets and how the two types or patent applications can overlap does not appear clear. With the Board’s statements regarding “business methods” being unpatentable subject matter, where this difference lies may become more and more important in the future to anyone filing software patents in Canada.

Amazon could always appeal the decision to the Federal Courts and the Court might have its say on the patentability of patent applications directed to business methods. But in the meantime, there is uncertainty in Canada as to what the consequences of this decision may be.