CIPO Allows Amazon.com 1-Click Patent

On December 23, 2011, the Canadian Intellectual Property Office (CIPO) issued a Notice of Allowance for Amazon.com's Canadian Patent Application No. 2,246,933 (filed September 1998) – the "1-Click" online purchasing process – while leaving some uncertainty as to how business method patents will be handled both by CIPO and the courts going forward.

The Commissioner of Patents initially refused to grant the patent on March 3, 2009, following a hearing before the Patent Appeal Board (see "CIPO Rejecting Business Method Patents", November 2009). The Commissioner's refusal was appealed to the Federal Court, which rejected the Commissioner's "form and substance" analysis, and the Commissioner's requirements that patentable subject matter must be technological and not a business method (see "Federal Court of Canada Grants Amazon.com's Appeal for 1-Click Business Method Patent Application", October 2010). The Federal Court's ruling was appealed to the Federal Court of Appeal. Without ordering the Commissioner to issue the patent, in its November 24, 2011 ruling the Federal Court of Appeal directed the Commissioner of Patents to re-examine Amazon.com's claims on an expedited basis (see "Federal Court of Appeal Overturns Commissioner on Amazon.com's 1-Click: Business Methods Not Excluded From Patentability", November 2011). As no issues of novelty and non-obviousness remained to be addressed, CIPO was left with the sole task of determining whether Amazon.com's business method was an essential element of a valid patent claim.

To assist with this determination, the Federal Court of Appeal provided guidance to CIPO. Namely, for a business method claim to be patentable, the claim must be distinguished from the claims ruled to be unpatentable in Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] 1 F.C. 845 (C.A.). Accordingly, there must be something more than merely implementing a novel mathematical formula in a computer. CIPO appears to have found that "something more" in Amazon.com's patent claims, which generally defined a client system storing a client identifier received from a server system to be used to identify a user to the server system upon the user performing a single action at the client system to order a displayed item. The single action prompts the client system to send to the server system a request to order the item together with the client identifier.

CIPO does not provide reasons when issuing a Notice of Allowance...