Benchmark Canada 2012
"Dimock Stratton appears to keep popping up in these patent cases, and they are not afraid to take on the megafirms."Federal Court reverses Amazon decision - business methods patentable
In a bluntly-worded decision, the Federal Court reversed the Commissioner's decision in Re Amazon.com, in which the Patent Office had declared "business methods" to be per se unpatentable. Reviewing the patent application de novo, the Court found all claims to be statutory.
The Commissioner's Amazon decision, authored by the Patent Appeal Board, laid out a novel approach to claim construction and analysis for determining whether claimed subject matter fell within the statutory definition of "invention". This approach required dissection of the claims into both "form" and "substance" and identification of a point of invention that was "technological" in nature, while also expressly excluding "business methods"--which were nebulously defined in the decision--from the statutory definition of invention. In setting out this new analytical approach, the Board drew heavily from foreign jurisprudence that supported its conclusions.
Justice Phelan's reasons, issued today, criticized the decision for this reliance on foreign rules, noting that this was "troubling and even problematic" because it "ignores fundamental differences between the foreign and the domestic regimes, or ignores Canadian legal principles altogether." Errors were identified in every step of the Amazon analysis, described by the Court as stemming from an adoption of a policy role and policies that were not concordant with Canadian law.
The Court also plainly stated that:
- although Canadian jurisprudence defined "art" as a contribution to human knowledge, there was no suggestion that this contribution should be assessed apart from the invention as a whole;
- there was no support for a technical test in Canada; and
- there was no tradition of excluding "business methods" from patentability.
The Court also observed that the Commissioner's decision was in the nature of a "test case" for the Patent Office's new policy regarding statutory subject matter, rather than an application of the law to the patent at issue.
