If I were to pick a subtitle for this post, it would probably be “Bilski, Canadian style”.
One of my colleagues (Thanks Peter!) was kind enough to mention that the judgement of the Federal Court of Canada (PDF) was released earlier today, so I set aside a few minutes to go through it. Admittedly, I haven’t been following the case all that closely.
In any event, rather than slogging through all 35 pages yourself, the following is a rather abbreviated summary of the decision:
- After quite a bit of back and forth on the application process, the Commissioner of Patents ultimately rejected Amazon’s patent application in 2009
- The Commissioner rejected Amazon’s patent on the basis that it was “non-patentable subject matter”, primarily for any one of three reasons:
- the claimed invention was not physical in nature nor did it result in some change or effect on physical objects;
- the claims were claims on business methods, which the Commissioner concluded were not patentable; and
- the claims were not “technological” in nature (meaning that they could be used to address a technical problem) and therefore not patentable.
- The Federal Court disagreed with each of the Commissioner’s reasons:
- the Court was of the opinion that the physicality test was too restrictive – instead, the proper test was whether or not the claims had “practical application” – i.e. something that results in a “change in character or condition” and found that Amazon’s claims could meet that standard through Amazon’s customers “manipulating their computer and creating an order”;
- the Court did not agree that business methods were non-patentable under Canadian law; and
- the Court did not agree that there was a “technology” test for patentability under Canadian law.
On the first point relating to physicality, the Court’s comments seem to echo, to some degree, the Bilski decision by the US Supreme Court and its rejection of the “machine or transformation” test.
Although the Federal Court did not agree with the Commissioner’s rejection of the patent, it also did not affirm its validity nor did it grant the patent. Instead, it sent back the patent for re-examination.
Of course, there is quite a bit more in the decision itself, including riveting details on novelty, analyses of the process used to assess patentability, elements of that process versus application of same to the patent itself, etc. etc. So consider the bullet points above a gross oversimplification and use accordingly.