We recently reported the release of the Federal Court of Appeal (FCA) decision 2011 FCA 328 in the now famous patent application for a "one click" internet shopping method filed in 1998 by Amazon.com ("Amazon") (see our bulletins "The (New) Verdict Is In: Business Methods Are (Still) Patentable In Canada" and "And The Saga Continues: Amazon Sent Back To The Patent Office" of November 28, 2011). This is a very important decision for anyone interested in protecting software-implemented innovations and business methods, especially in view of the serious lack of jurisprudence in that field in Canada.
The patent application had survived the latest test and was returned to the Patent Office for expedited examination. Although the door was not closed to the patentability of business methods and software-implemented innovations, the Court had raised doubt as to patentability of the claims in the Amazon patent application. A purposive construction of these claims, to be carried out by the Patent Office, would determine if they contain patentable subject matter. The Court had instructed the Patent Office to keep an open mind to the possibility that a novel business method may be an essential element of a valid claim.
On December 23, 2011, the Patent Office finally allowed the application with the set of 75 claims previously pending. This is excellent news for Amazon which has been waiting to get a patent on this invention since 1998. Unfortunately, reasons for allowance or an indication of the methodology employed by the Patent Office during its purposive construction of the claims are not available. On December 28, 2011, Amazon paid the final fee to get the patent granted. The Canadian patent for the "one click" internet shopping method will therefore be issued shortly (some sources indicate an issue date of January 17, 2012). It will bear number CA 2,246,933 and will expire on September 11, 2018 provided all yearly maintenance fees are paid.
The Commissioner of Patents therefore decided not to appeal this FCA decision and did not seek guidance from the Supreme Court.
It is anticipated that now that the Patent Office has allowed the application, new examination guidelines intended for the patent examiners will be prepared by the Commissioner and will be an essential tool for applicants in order to better understand what constitutes a patentable software-implemented innovation or business method.
In the meantime and practically speaking, applicants should ensure that their claims cover embodiments with physical existence, or something that manifests a discernible effect or change. A practical application for the invention will also be important. Applicants should not claim mere abstract ideas. Finally, it should be apparent from purposive construction of the claims in the application the manner in which computers are used to put an idea to use.
