While the decision is good news for patenting business methods in Canada, some would have liked to see the Commissioner appeal to the Supreme Court to gain additional clarity about the Court of Appeal’s decision.
An amendment to the patent application was filed on December 22 and a notice of allowance was issued on December 23 – just under one month after the Federal Court of Appeal ruled that the patent should be re-examined using the guidance outlined in its decision.
Because there was no additional office action, the Office’s interpretation of the decision is unknown, and will remain so until new guidelines for examiners on business methods are issued, which is likely to be some time.
“I was a bit surprised,” said Fasken Martineau’s Isabelle Chabot of the Office’s decision. “But since we now have a new commissioner in charge at the Patent Office, it is slightly less surprising because the Federal Court of Appeal criticised his predecessor’s work rather than his own.”
If former Commissioner of Patents Mary Carman were still in Office the decision would almost certainly have been appealed to the Supreme Court. The present commissioner, Sylvain Laporte, has a bachelor’s degree in computer science and a master’s degree in computer engineering and has been characterised as business-savvy.
The quick allowance of the Amazon patent suggests his views on business method patentability may differ significantly from Carman’s.
But without an office action or new guidelines, uncertainty remains for business method applicants. According to Aaron Edgar and Grant WC Tisdall of Gowlings, it is still unclear how business methods can effectively satisfy the Federal Court of Appeal’s so-called physicality requirement.
Said Edgar and Tisdall in an article: “The Court stated that consideration needs to be given to operation of the computer in conjunction with the methodology and ‘the manner in which computers are used to put an abstract idea to use’. At this stage it is not clear how the Commissioner will, in general, treat the physicality of a business methodology during the course of examination of business method patent applications.”
The speedy allowance of the Amazon patent also “buys time” for CIPO with respect to issuing new guidelines, added Chabot. Since the office has not yet outlined its reasoning in an office action or an appeal, there is no need to codify that reasoning for examiners yet. “It will be a few weeks or months,” said Chabot. “There’s no rush anymore.”
