On Thursday of last week, the Federal Court of Appeal's decision regarding Amazon.com's 1-Click business method patent made its way online (see IPPractice.ca for more details). I'm still in the process of parsing the pdf of the decision, but it appears the FCA has ordered the patent to be re-examined by the Commissioner of Patents, in an expedited manner and in one that is consistent with the findings of the recent decision. Both parties have two months to appeal to the Supreme Court of Canada.
The Commissioner originally rejected the patent because it failed to show an "invention" as it is defined in the Canadian Patent Act. In other words, it wasn't patentable subject matter. Amazon appealed this at the Federal Court level and the judge there (Justice Phelan) agreed that the Commissioner erred in her reading. Phelan said the Commissioner mistakenly claimed business methods were categorically not allowed in Canada, that she relied too heavily on the "physicality" of inventions and that she didn't follow proper principles of claim construction (the method by which inventions are described in patent applications). Phelan suggested some tests/requirements that should be applied to business method patents to clarify the process and all but approved Amazon's application.
The Federal Court of Appeal set aside Justice Phelan's judgement, but in doing so, it still agreed with many of Phelan's arguments. For example, the court agreed that there is nothing in the patent act that categorically excludes business method patents. It also agreed that an invention must make some kind of discernable physical change or have some kind of practical application in order to obtain a patent.
However, the decision also notes that Justice Phelan's prescription for determining the patentability of business methods was inappropriate and for these reasons, it should be sent back to the Commissioner for re-examination.
On first pass, I find the decision schizophrenic. It reads as if it's paving the way to accept business method patents (and the one-click in particular) but it continually backtracks with statements that call into question the validity of Amazon's claims. For example, just after saying that there is no reason to categorically exclude business method patents, the decision carries on: "However, it does not necessarily follow that the Commissioner was wrong in the result. In my view, it remains an open question whether the subject matter defined by the patent claims is an "invention" within the statutory definition" (Line 48). By not making a judgement on the patentability of 1-Click, the decision simply sends the case back to the Commissioner with little more or no new information than the patent office had previously.
Those worried about the implications of business method patents in Canada (including yours truly) can seek solace in the fact that at least the Court of Appeal didn't outright grant Amazon its patent. But the wording of the decision suggests Amazon.com is one step closer to owning 1-Click here.
Ultimately, the FCA's ruling is a directionless one that leaves the question of business method patents unanswered in Canada.
photo from flickr user Davichi
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