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 Act.

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 (CIPO).

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 claims.
  • 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:
    1. 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;
    2. The Canadian case law has never established conclusively that a business method cannot be patentable subject matter;
    3. 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 matter.
  • 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.

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