The Lawyers Weekly - January 20, 2012

In Canada (Attorney General) v. Amazon.com, Inc., the Federal Court of Appeal provided no small comfort by confirming the primacy of claim language in evaluating the patentability of patent application claims and the patent eligibility of “business method” inventions. While the Patent Office ultimately allowed Amazon’s patent application in the wake of this decision, the decision has created some ripples of uncertainty.

The case arose as a result of the Commissioner of Patents’ rejection of Amazon’s patent application for its “one-click” online ordering invention on several grounds, including an exclusion of “business methods” from patentability, a claim analysis that seriously diverged from the purposive claim construction mandated by the Supreme Court of Canada and an importation of a requirement of a “technological” contribution to the field of knowledge.

The Federal Court returned the application for examination by the Patent Office, ruling that business methods were not per se unpatentable, the “technological” requirement was overly restrictive and under a proper claim construction, Amazon’s claims recited patentable subject matter. On appeal, the various issues resolved to the high level questions of what analytical framework should be applied when determining

JENNA
WILSON

Despite the comfort that comes with following established jurisprudence, however, there may remain some uncertainty for patent applicants and owners.

“

Jenna Wilson, Dimock Stratton LLP

whether a patent application should be refused on the basis of lack of patentable subject matter, and what constituted a patentable “art” or “process”.

On the first issue, the Commis-
sioner argued that the analysis was
based on what the inventors had
“actually invented” independent of
any construction of the patent
claims, while Amazon supported
an analysis based on a purposive
claim construction. The Federal
Court of Appeal ruled the analysis
of patent-eligible subject matter
did indeed require a purposive
claim construction based on “the
subject matter defined by the
claim” and not a divination of the
inventor’s “actual invention.”
On the question of what con-
stituted patentable subject mat-
ter, the court substantially
agreed with the Federal Court’s
finding that the Commissioner’s
requirement of a “technological”
contribution to knowledge was
“highly subjective and unpredict-
able in its application,” and that
there was no Canadian jurispru-
dence that conclusively estab-
lished that “business methods”
could not be patentable.

Jenna Wilson practises patent law and prosecution at IP boutique firm Dimock Stratton LLP.

Reasons: Canada (Attorney General) v. Amazon.com, Inc., [2011] F.C.J. No. 1621.

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An oddity in Intellectual Property Law Lawddities Lawddities

Legal Oddities in (Blank) Law Yoga lawsuit

2012 Edition MAJOR BUSINESS AGREEMENTS March 22 – 23, 2012 | Casino Nova Scotia | Halifax

PROGRAM CO-CHAIRS
Jeffrey A. Hoyt, McInnes Cooper
Brian Tabor QC, Stewart McKelvey

KEyNOTE PANEL:

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heats up

Indian yoga guru Bikram Choudhury and former student Greg Gumucio are stepping up to the mat in a heated copyright battle over hot yoga.

Bikram Yoga studios teach a
specific type of yoga that lasts 90
minutes in a 40C heated room,
with 26 poses, two breathing
exercises and a scripted dialogue.
Choudhury has filed a lawsuit
against Gumucio claiming that
his “Yoga to the People,” along
with some other studios, offers
classes that are identical to
Bikram Yoga.

Choudhury’s lawyer, Robert Gilchrest, stated that, because Choudhury had already registered a copyright for his book containing the yoga sequences, it must be honoured. The lawsuit also claims trademark infringement and violation of teacher-certification agreements, according to BloombergBusinessweek.com. — Anum Lateef

John Roberts, McInnes Cooper
Janet Curry, Workers’ Compensation Board of Nova Scotia
Catherine Gaulton, Capital District Health Authority, Halifax
J. T. MacQuarrie, Q.C., Stewart McKelvey
Claire Milton, Q.C., BoyneClarke LLP
Robert G. H. Patzelt Q.C., Scotia Investments Limited (Invited)