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September 16, 2009
Amazon.com has appealed the recent rejection of a Canadian patent application[1] for its widely publicized 1-Click technology.[2] That rejection, made earlier this year by the Commissioner of Patents with the recommendation of the Patent Appeal Board, had signaled a significant shift in the Patent Office's approach to patentable subject matter and, in particular, software and business method patents.[3]
In its Notice of Appeal, filed September 3rd in Federal Court, Amazon.com directly challenges the more controversial positions taken in the rejection: the "change of character or condition" test for an art or process; the unequivocal prohibition against business methods; the "technological" test for subject matter; and, the novel "form-and-substance" approach to claim construction. With all of these issues under consideration, the appeal's outcome has the potential to significantly alter the landscape for software and business methods in Canada.
For now, the appeal is in its early stages, but software and business method innovators will want to keep a close watch on proceedings as the case progresses.
Stephen M. Beney, B.Sc. (Physics), is a partner in Bereskin & Parr LLP's Software & High Technology Practice Group. He can be reached in Mississauga at 905.817.6102 or sbeney@bereskinparr.com.
Paul Horbal, B.A.Sc., M.Sc. (Elec. Eng.), J.D. is an associate lawyer in Bereskin & Parr LLP's Software & High Technology Practice Group. He can be reached in Toronto at 416.957.1664 or phorbal@bereskinparr.com.
[1] Canadian Patent Application No. 2,246,933, filed September 11, 1998 by Amazon.com, Inc.
[2] Decision #1290, Re Application No. 2,246,933, (March 5, 2009) online here.
[3] For more on the previous decision of the Patent Appeal Board, see our Summer 2009 newsletter here.
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