The recent Amazon.ca decision of the Federal Court of
Appeal in 2011 reverses the Commissioner of Patent's long-held
belief that business method patents are unpatentable subject
matter. The implications of this decision for life sciences
companies are far-reaching. The Amazon. ca decision has
implications to medical use claims. Additionally, as a result of
the Amazon.ca decision, life sciences companies should now
consider taking advantage of business method patent protection
generally associated with technologies relating to
telecommunications, computer devices, software and e-commerce.
However, with advances in computer technology, an increasing
number of life science companies are incorporating sophisticated
hardware and software into their diagnostic, therapeutic or
surgical products. In order to maximize revenues, it is critical
that life science companies understand the issues relating to
patenting software and business method technologies in Canada. The
area of personalized medicine is particularly ripe for advances in
software and hardware driven products that can be tailored to
develop patient-specific treatments.
The guiding case on business method patents is a 2011 decision
of the Federal Court of Appeal in Amazon.com Inc. v.
Commissioner of Patents (2011 FCA 328). In 1998, Amazon
applied to patent its "one-click" technology. The
application relates to a method of simplifying the online ordering
process. The "one-click" invention allows the user to
subsequently purchase items with a single mouse click without
repeatedly entering security and payment information. The Canadian
Commissioner of Patents refused the application on the basis that a
claim to a business method is unpatentable in Canada. The Federal
Court and Federal Court of Appeal disagreed, finding that there is
no prohibition on business method claims under Canadian law per
Specifically, the Federal Court of Appeal found that a business
method can qualify as an "art" under s. 2 of the
Patent Act if it satisfies the following three-part
It must not be a disembodied idea but have a method of
It must be a new and inventive method of applying skill and
It must have a commercially useful result.
The Court of Appeal further held that the rationale for each of
these conditions is grounded in the Patent Act, in that
they reflect the statutory requirements of novelty, utility,
non-obviousness, and the prohibition on the granting of a patent
for a mere scientific principle or abstract theorem. As a result,
the Court of Appeal ordered the Commissioner to reexamine the
application to determine whether the claims of the
"one-click" application met the three-part test.
Subsequently, the Commissioner granted Amazon's
The Court of Appeal also reiterated that, when construing the
claims of a patent, one cannot simply look at "what has been
invented" and ignore the invention as a whole. Claims are to
be interpreted in a purposive manner as set out by the Supreme
Court of Canada in Free World Trust v. Électro
Santé Inc., (2000) 2 S.C.R. 1024.
Finally, the Court of Appeal provided additional guidance that
is helpful to life science companies. The definition of invention
under s. 2 of the Patent Act is broad and encompasses
"unforeseen and unanticipated technology." The Patent
Act is not static. It must be applied in a manner that permits
advances in technology to permit inventors to move from the
industrial age to the electronic age. Technology is in a constant
state of fl ux. Any attempt to define it would serve to defeat the
flexibility which is so crucial to the purpose of the Patent
The Amazon.ca decision has clearly had an impact on the
availability of patent protection for technologies related to
telecommunications, computer devices, software and e-commerce. By
extension, patent protection is now available for innovations in
software and business methods in the life sciences industry.
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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