Law Times

Law Times • December 6, 2010 BRIEF: INTELLECTUAL PROPERTY LAW PAGE 15 October ruling in Amazon.com Inc. v. Canada (Attorney General) remains in limbo thanks to the federal Justice Department's de- cision to file a notice of appeal. Federal Court Justice Michael Business methods in limbo as AG appeals Amazon ruling A BY ANDI BALLA Law Times flood of new patent ap- plications anticipated af- ter the precedent-setting that business methods can't be patented. There needs to be a "practi- cal application" for the method affirming that abstract ideas or theorems wouldn't be patent- able, said Phelan. That ruling and reasoning Phelan released his verdict on Oct. 14 in the high-profile case. The matter stems from the com- missioner of patents' decision in 2004 to deny the online retailer's request to patent a method that allows users to pay for products with one click using information previously stored in the system. "It is accepted that the 'one- click' method is novel; the court finds that an online ordering system which facilitates this adds to the state of knowledge in this area," Phelan wrote in his decision. "The commissioner's decision is quashed and is to be sent back for expedited re-examination." The commissioner had said the method was obvious and thus not patentable. But Amazon.com, which already holds similar U.S. patents, took the matter to court. In a strongly worded deci- sion, Phelan also indicated he wasn't too happy the commis- sioner relied heavily on foreign jurisprudence throughout the decision to deny the patent. "This becomes troubling and even problematic when she ig- nores fundamental differences between the foreign and the domestic regimes or ignores Canadian legal principles alto- gether," Phelan wrote. He added there's no tradi- tion or assumption in Canada have brought Canada in line with its southern neighbour after the recent U.S. Supreme Court Bilski v. Kappos decision said a method can be patented under certain circumstances. But the attorney general and commissioner of patents out- lined three grounds for appeal in the Nov. 15 notice. They said the judge erred in finding the claims constitute patentable subject mat- ter; that his interpretation of the definition of invention was incor- rect; and that "his characteriza- tion of the 'applicant's invention' for the purpose of determining whether it fell within the definition of 'invention'" was wrong. But for the moment, the Fed- eral Court's Amazon.com decision is viewed as having clarified an important element of Canadian intellectual property law and was much awaited. "This decision clarifies that claims for business methods are patentable where they have some practical application, em- bodiment or link to hardware," says Adam Haller of Ogilvy Renault LLP. "However, where a claimed invention can be de- scribed merely as a scheme, plan or disembodied idea not put into action, the claimed inven- tion may not be considered pat- entable subject matter." Anne Kinsman, an Ottawa lawyer and partner at Borden Ladner Gervais LLP, says the decision could be applied to U.S. approach contrasts with China Continued from page 14 torts the litigation process and makes way for "serious potential for judicially confirming unnecessary, potentially competition-threat- ening rights to exclude." Meanwhile, the U.S. approach to the weighing of evidence differs from that adopted by Canadian courts. Under the Patent Act, a patent is presumed to be valid and courts place the civil burden of proof, the balance of probabilities, on someone seeking to invalidate it. Bennett Jones LLP partner Trent Horne doesn't expect Canadian courts to change that approach based on any decision coming out of the U.S. top court. "The Federal Court doesn't stumble upon itself to adopt what the U.S. court says," he notes. "If the U.S. Supreme Court comes out and talks about the burden of proof, our Federal Court judges aren't going to be pushing each other out of the way to wholeheartedly adopt it. That said, they're going to look at it." Greg Piasetzki of Piasetzki & Nenniger LLP in Toronto says the U.S. lower courts' decisions to side with i4i up to this point should assuage the fears of other Canadian companies and individuals facing litigation south of the border. "You can look at it and say, 'Jeez, isn't that great. A little Canadian company takes on a pretty iconic American company and comes out on top,'" says Piasetzki. "That's a very heartening thing." Piasetzki contrasts the U.S. approach to that taken in countries such as China, which has a reputation for making it exceedingly difficult for patent holders to enforce their rights. "The situation has improved, but we tell clients it's really hard to enforce your patent in China," he says. As a side note, U.S. Chief Justice John Roberts will have no part in the i4i case. He has reported in annual disclosure materials that he owns between $100,001 and $250,000 in Microsoft stock that paid out as much as $5,000 in dividend income last year. A decision in the i4i case is expected in July. LT Untitled-2 1www.lawtimesnews.com Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com 2/2/10 9:26:56 AM Ridout_LT_Feb9-16_09.indd 1 several technology sectors. "The decision has important implications for computer-imple- mented and business-method in- ventions, which must now be as- sessed against the same standards as more conventional industrial inventions," she says. In business terms, the ruling could also open the field for new patents if the courts uphold it. "Following this decision, it appears that a broad and open view of patentable subject mat- ter exists in Canada," says Yasin Bismilla, a patent agent with LT — With files from Robert Todd When it comes to IP in Canada, We're Well Read Ridout & Maybee LLP: Editors of the Canadian Patent Reporter it all starts somewhere www.ridoutmaybee.com Lang Michener LLP. "With this decision, an area of uncertainty in Canadian patent law has been clarified, and there is no outright exclusion to business-method patents in Canada." 2/5/09 10:52:55 AM Good enough is never good enough That's the attitude we bring to every matter – because the difference between winning and losing is often as simple as which side went the extra mile. Our winning track record and reputation as one of Canada's ip litigation "go-to" firms is based on this dedication to detail. That's why in our experience, when you want results, "good enough" is never good enough.

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