Rejection of Amazon’s One-Click patent attacked in appeal brief

December 4th, 2009 by Barry Sookman Leave a reply »

Amazon has filed its Memorandum of Fact and Law in its appeal from the Canadian patent office rejection of its “One-Click” patent application. Re Patent Application No. 2,246,933 (March 5, 2009), Patent Appeal Board and the Commissioner of Patents Decision.

The Board had ruled the one click invention non-statutory for three principal reasons.

First, the Board ruled that if a claimed invention is not “an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition”; it is not an art under Section 2 of the Patent Act.

Second, the Board held that business methods are non-patentable subject matter in Canada. According to the Board, patenting business methods “would involve a radical departure from the traditional patent regime, and since the patentability of such methods is a highly contentious matter, clear and unequivocal legislation is required for business methods to be patentable.”

Third, the Board held that the substance of a claimed invention is non-statutory if no technological innovation has been added to human knowledge. The Board did not view the contribution of Amazon’s one click invention to be technological in nature:

Amazon takes issue with each of these holdings asserting that they are all wrong in law. Amazon asserts that the Commissioner had relied on inapplicable foreign law and had misstated Canadian patent jurisprudence.

Importantly, Amazon asserts that the Commissioner was wrong to hold that business methods are excluded subject matter under the Patent Act.

Amazon’s argument is set out below. This is a very important case which will have very significant impacts on Canadian patent law. It is worth following carefully. It is surprising that so far, no one has intervened in the case in support of either side.

Amazon Memo Fact & Law 091119

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