A click away: update on Attorney General of Canada et al. v. Amazon.com, Inc.

Published August 5th, 2011

     An appeal of the Federal Court’s decision in Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011 (“Amazon”) was heard by the Federal Court of Appeal in Toronto on June 21, 2011.  More recently, the respondents (Amazon.com) submitted a request to file further written submissions relating to Schlumberger v. Canada, [1982] 1 F.C. 845 (C.A.), an earlier decision pertaining to patenting computer-based methods that is cited often by the Canadian Intellectual Property Office in subject-matter rejections.  Amazon.com’s request, whether granted or not, could delay delivery of the much-anticipated appeal decision by several weeks.

     The issue at hand involves Amazon.com’s Canadian patent application for a particular “one-click” system for online shopping.  The system simplifies the online shopping process by storing a client identifier, known as a cookie, on the Internet user’s computer.  The user can then purchase items with a single mouse click while still being immediately recognized by the server for security and payment purposes.  The one-click business model thus removes any need for the user to enter additional information.

     Amazon.com has received mixed reception of its attempts to patent its one-click system and method in other jurisdictions.  The European Patent Office (EPO) Board of Appeal ruled earlier this year that the one-click system lacked inventive step when compared with the state of the art.  The Board of Appeal agreed with the EPO’s original decision, indicating that the one-click system merely reduced the number of decisions needed to place an order, and did not contribute anything new to the process.  Additionally, the Board found that anyone with an understanding of cookie technology could determine how to use cookies to add simplicity and security to the online shopping process.  A United States Patent for the system was granted in 1999, but was subjected to a process of re-examination during 2007, which resulted in a narrowing of the broadest claims in view of prior art under consideration.

     The upcoming Canadian appeal decision is expected to be particularly significant to Canadian applicants attempting to patent computer-based business systems and methods.  However, the court’s decision will have significance in other fields of technology, because the court has been asked to rule on the validity of a two-part “form and substance” approach to assessing whether any claimed subject-matter qualifies as patentable under Section 2 of the Patent Act.  Also under review is the “what has been discovered” approach to assessing whether claimed subject-matter is patentable, as set out in Schlumberger v. Canada.

     Please let us know if you would like to discuss the patenting of particular kinds of inventions, or wish to be kept apprised as to the state of the law on patentable subject matter in Canada and in other jurisdictions, as the Amazon.com story unfolds.

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