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 Appeal.
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.
