On November 24, 2011, the Federal Court of Appeal rendered its
judgment in the case of Canada (A.G.) v. Amazon.com,
Inc. (2011 FCA 328) requiring the Commissioner of
Patents to re-examine the patent application presented by
Amazon.com in 1998, in a manner consistent with the Court's
reasons. Instead of appealing that judgment, the Commissioner chose
to deliver the patent claimed on January 17, 2012.
At first, the Commissioner had refused to grant a patent to
Amazon.com for its one-click method of Internet shopping because
the claimed invention was not an "art" or a
"process" within the meaning of the Patent
In 2010, the Federal Court had quashed that decision, judging
that Amazon.com's patent application met the requirements of
the law and therefore should have been granted by the Commissioner.
That decision had given rise to new examination directives being
given to the examiners at the Canadian Intellectual Property Office
In addition to opening the door to the patentability of
innovations in the computer science sector as well as inventive and
new commercial practices, as the United States Supreme Court had
done in the Bilski case, the judgment
teaches us that:
The identification of the "actual invention" by the
Commissioner must be based on a purposive construction of the
The Federal Court of Appeal showed itself to be quite critical
with respect to the criteria relating to the notion of an
"art" used by the Commissioner to reject Amazon.com's
patent application, by ruling that:
The criterion of scientific or technological in nature should
not be used as a stand-alone basis for distinguishing subject
matter that is patentable from subject matter that is not;
The Canadian case law has never established conclusively that a
business method cannot be patentable subject matter;
As for the physicality requirement, it is agreed that
patentable subject matter must be tangible or manifest a
discernible effect or change. However, a simple "practical
application" is not sufficient to give a claimed invention
"physical character" so that it is patentable subject
The fact that a patent is granted for an invention in one or
more other countries cannot determine whether it constitutes
patentable subject matter in Canada.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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