Jan 28 2010
On March 5, 2009, the Patent Appeal Board (PAB) rejected Amazon’s patent application No. 2,246,933, which claimed “one click” purchasing of products. The application included method claims as well as machine claims implementing the method. The PAB rejected all of the claims in Amazon’s application on the ground that a business method cannot be patented.
In assessing whether subject matter is patentable, the PAB held that an Examiner must look at both the form and the substance of the claim:
- Form – what the language of a claim, on its face, appears to define as the invention
- Substance – what has been discovered: the examiner must understand the nature of the claimed invention and determine what has been added to human knowledge
The form and the substance of the claim must both be directed to a new and useful art, process, machine, manufacture or composition of matter. If the claim is directed to an “art”, it must cause a change in character or condition of some physical object. Additionally, the claim must be a technological solution to a problem. The claim must not be directed to specifically excluded subject matter such as a business system and method, or a computer program if the claim is a method of calculation.
The PAB stated that permitting business methods to be patentable would involve a radical departure from the traditional patent regime. Without clear and unequivocal legislation from Parliament, business methods do not constitute patentable subject matter.
The PAB also held that a claim which relies on a particular feature to render it new and unobvious cannot rely on a different feature to qualify as statutory subject matter.
Amazon has filed an appeal of the PAB’s decision in the Federal Court. The appeal is to be heard in Ottawa on April 19, 2010 at 9:30 am. We will be following this closely, and will report further.
In late 2009, Chapter 12 of the Patent Office’s Manual of Patent Office Practice was also amended to specifically exclude pure business methods from being patentable subject matter, as being a “scheme, plan or rule for performing an operation, achieving a result, controlling a method, or the like, or a process that is exclusively a series of mental steps.”
This article is for information purposes only and does not constitute legal or professional advice.
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Tags: Patent Appeal Board, Patents