Amazon '1-Click' Heads for the Canadian Federal Court of Appeal

Click on the image
to view the complete
Notice of Appeal

Last month we reported the ruling of the Canadian Federal Court, overturning the decision of the Commissioner of Patents to refuse Amazon.com's claims covering its '1-Click' ordering system on the grounds that they were directed to unpatentable subject matter, namely a "business method".

On 15 November 2010, the Attorney General of Canada and the Commissioner of Patents filed a Notice of Appeal in the Federal Court of Appeal against the ruling.  The grounds of the appeal are that the primary judge "erred in fact and law" in finding that the Amazon claims comprise patentable subject matter. 

In particular:

1. that the judge erred in his interpretation of the terms "art" and "process" in the Canadian Patent Act, by construing them so broadly as to encompass the Amazon method claims;
2. that he further erred in construing the term "machine" so broadly as to encompass the Amazon system claims;
3. that he erred in finding that an "invention" need not display a technological aspect;
4. that he erred in rejecting the "form and substance" approach for analysing the "invention", which had been employed by the Commissioner of Patents;
5. that he erred in not properly applying the "what has been discovered" approach for analysing the invention, which the appellants allege has been described in "binding jurisprudence"; and
6. that he erred in characterising the invention of the method claims such that it fell within the scope of the terms "art" or "process", and in characterising the invention of the system claims such that it fell within the scope of the term "machine".

We will continue to keep an eye on this case as it progresses.

---

Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: Amazon 1-click, Business processes, Canada, Patentable subject matter