Patent Appeal Board ruling can mean that inventions must have a physical form to be patented, says Edward Fan in Lexpert

Top Business Cases of 2009

January 12, 2010

Lexpert's list of the top business decisions of 2009 includes a case that concerns patent application no. 2,246,933.

In March 2009, the Patent Appeal Board (PAB) rocked the intellectual property community with a definitive statement against the patentability of business method patents in Canada. The pronouncement came in a lengthy decision, as discussed in previous news item, that rejected Amazon.com Inc.'s patent application for a "one-click" shopping system.

The case arose after a patent for the one-click feature was issued in the United States in 1988. The Canadian Intellectual Property Office (CIPO) rejected the application in 2004. Amazon appealed to the board.

Despite finding that the one-click innovation was both new and non-obvious, the board ruled that the claims advanced were not patentable under the Patent Act because they did not define a "technological" advance that was either a physical object or an act performed "by some physical agent upon some physical object and producing in such object some change either of character or condition."

Edward Fan says the ruling has broad implications. "The PAB's reasons can be interpreted not only as holding that inventions must have a physical form, but also that the machine must be at the heart of the invention," he opines. "That would take out not just pure business method patents, but also implemented technologies that affect business dealings."

Read the full article here.

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