Are business methods patentable in Canada? Guidance comes from
the recent Amazon case. In this case, Amazon's
'1-Click' business method patent was ultimately accepted by
the Commissioner of Patents after an initial decision in 2009 not
allowing it. Amazon appealed the Commissioner's initial
decision to the Federal Court of Canada, where the Court stated
that there was no basis in law to exclude business methods from
patentability in Canada. The Court overruled the various findings
of the Commissioner, including the vague "technological"
requirement, and concluded that business methods were nurtured
under the traditional categories of patentable subject matter
explicitly enumerated in the Patent Act.
The Court of Appeal affirmed the Federal Court's decision,
and provided some 'rules of thumb' for distinguishing
between patentable and non-patentable statutory subject matter in
regards to business methods. It held that a business method
that includes elements of an abstract idea must cooperate with
other elements of the claimed invention to create a unitary result
so as to become part of a combination of elements that: 1) provides
a solution to a technical problem; and 2) that has a physical
existence or manifests a discernible effect or change of character.
Additionally, while the Commissioner initially held that the
inventive aspect of a claim may be analyzed in isolation, the
Federal Court rejected this and held that a claim must be construed
purposively 'as a whole'.
Some commentators have observed that, had the Court of
Appeal's decision in Amazon been appealed to the Supreme
Court of Canada, additional needed guidance about the criteria by
which 'business methods' should be judged, could have
emerged. In any event, the legal path taken by the Amazon 1-Click
patent application has reduced a great deal of uncertainty about
whether 'business methods' can constitute patentable
subject matter in Canada, to the benefit of those seeking
protection for such methods.
This year the Canadian Patent Office issued practice guidelines
which were intended to guide Examiners and practitioners about how
to apply the conclusions of the Court of Appeal in the
Amazon case. Practitioners are concerned that these practice
guidelines narrow the field of patent-eligible subject matter
beyond the 'rules of thumb' established by the Court of
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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