Amazon
Continued From Page 1
also declined comment.
However, the case was a hot
topic within the IP Bar, with
several law firms quickly send-
ing out bulletins to clients.
If the decision survives
intact, it certainly “could be a
bonanza for patent attorneys,”
Brian Gray of Toronto’s Ogilvy
Renault acknowledged.
Gray told The Lawyers
Weekly important business sec-
tors such as the insurance,
“The whole
section of business that had not
been in the technological,
machine-driven, engineering
world…will have to pay more
attention,” he advised. “People
who will want to enforce pat-
ents, ‘trolls’ if you will, and
other non-practising entities,
may be anxious to try to enforce
patents, like they have in the
U.S. So there are an awful lot
of…U.S. patents that are pend-
ing here that have been waiting
for this decision.”
Added Richard Owens of
Toronto’s Stikeman Elliott, “not
only will [ Amazon.com] pro-
mote work, but it will make
[lawyers’] work easier because
right now we are drafting
around complicated and artifi-
cial guidelines imposed by the
Canadian Intellectual Property
Office.
“Now we can get at the inven-
tion much more directly, and
without risk of muddying the
claims with unnecessary
material such as incorporating
physical embodiments [of the
claimed invention] which the
court seems to say we don’t
need to pay as much attention
to.”
Owens told The Lawyers
Weekly the judgment is “prob-
ably the most
important pat-
ent case” since
the Supreme
Court’s Har-
vard Mouse
ruling that
higher life
forms, includ-
ing plants, are
not patentable:
[2002] 4 S.C.R. 45.
“Harvard Mouse created a lot
of uncertainty about the patent
process, and especially patent-
able subject matter [which] is
Gray
Owens
at foundation of patent system,”
Owens observed. “What’s an
invention? What can you pat-
ent?
The Amazon case went a long
way —and I think very deliber-
ately—to address the problems
that Harvard Mouse created. It
clarifies that the patent office
has much more limited discre-
tion than it thought it had to
sort of interfere on a policy
basis on determining patent-
ability.”
According to Owens, Ama-
zon.com “essentially negates
existing guidelines on patent-
ability that the patent office has
published…concerning software
inventions and business process
patents. And it clarifies that the
courts are going to take an
expansive interpretation on
patentability, absent clear law
to the contrary” in the Patent
Act or from the Supreme Court.
Owens flagged the judgment’s most important aspects
as: (1) much less reliance on a
claimed invention’s physical
embodiment, and a greater willingness by the court to accept
patents on abstract inventions
such as business methods; ( 2)
tion in the United States.”
Gray said there is still uncer-
tainty over how “concrete and
tangible” a business method
must be since mere ideas are
not patentable.
Section 2 of the federal Pat-
ent Act permits the patenting of
“inventions” defined as “any
new and useful art, process,
machine, manufacture or com-
position of matter, or any new
and useful improvement in any
art, process, machine, manufac-
ture or composition of matter.”
“Art” has been held to include
“methods” and “processes.”
However there are very few
Canadian cases dealing with
patents for business methods.
According to Justice Phelan,
the commissioner’s decision to
deny a patent to Amazon.com
(based on the findings and reasons of a Patent Review Panel)
effectively created a test for
assessing patentable subject
matter; outlined new exclusions
and requirements for patentability; and outlined her view of
the scope of patentable art.
On appeal, the commissioner
urged that her decision to
exclude business methods was
based on case law and the statute. But Amazon.com convinced
the judge that she was relying
on her own policy choice.
“Contrary to what the Commissioner suggests, to implement a business method exception [to patentable
subject-matter] would be a
‘radical departure’ from the current regime requiring Parliamentary intervention,” Justice
Phelan wrote.
He criticized the commis-
sioner for taking on a “policy
role”, and for “importing” from
foreign jurisprudence ideas “not
concordant with Canadian law.”
The commissioner also erred
by introducing into Canada’s
patent regime “one more novel
and unnecessary requirement
for patentability”: namely that
the claimed invention be
technological in nature, he
ruled.
The court concluded that the
appellant’s system and process
claims did qualify as statutory
subject matter.
In doing so, the judge found
too restrictive the commissioner’s definition of patentable
“art” as requiring acts by some
physical agent on some physical
object that produces a change of
character or condition in a
physical object.
Rather, following appellate
jurisprudence, Justice Phelan
applied a broader test which
stipulates that art: (i) must not
be a disembodied idea but have
a method of practical applica-
tion; (ii) must be a new and
inventive method of applying
skill and knowledge; and (iii)
must have a commercially use-
ful result.
Reasons: Amazon.com, Inc. v. Canada
(Attorney General), [2010] F.C.J. No. 1209.
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“an ability to push back on the
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Gray noted that the U.S.,
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the controversy over the patentability of business processes.
“It is a difficult issue, so I am
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Yet in the wake of Amazon.
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