Alex Gloor is a JD Candidate at Osgoode Hall Law School.

North of the Border we are quite familiar with the patent application brought by online retailer Amazon.com for its one-click ordering system. This application was rejected in Canada as being directed towards unpatentable subject matter. However, in the United States a modified version of its American counterpart has recently been upheld upon re-examination by the USPTO.

The one-click patent was initially filed in 1997. Shortly thereafter, Amazon licensed the technology to Apple and sued rival Barnes & Noble for violating the patent. In 2006, an actor from New Zealand, Peter Calveley, was sufficiently ticked off that a patent was granted for what he saw to be an obvious invention that he filed a claim for re-examination. Calveley brought forward documents that he claimed constituted prior art, and by 2007 the USPTO had rejected the majority of the claims in the one-click patent. Amazon took action, "narrowing" their claims so that they only pertain to the "shopping cart model" used by various e-commerce outlets. It was this modified patent that was accepted upon re-examination, more than four years after the re-examination process began. As has been noted elsewhere, the practical effect of limiting the patent to shopping-cart retailers will be minimal, as this is the model used by the majority of e-commerce retailers.

It has been suggested that the upcoming In Re Bilski decision from the Supreme Court of the United States may have implications for the one-click patent. This may be true, and the uncertain bounds of the machine-or-transformation test make prognostication difficult. For example, it is unclear whether a process associated with a "general purpose computer" can satisfy the definition of "machine". Also, it is debatable whether business methods are patentable subject matter in the first place. While the majority of the Federal Court in Bilski did not hold business methods unpatentable, a strong dissent by Judge Mayer stated that business methods are ineligible subject matter for patents as the patent system is designed to promote scientific and technological advances rather than methods of conducting business.

I will also use this post to update the domestic status of Amazon's patent application. To nobody's surprise, Amazon filed for appeal on Sept. 3 of 2009. The case is to be heard before the Federal Court on April 19th, with the written arguments being already submitted. These submissions point to many of the same issues that arise when thinking of the patent in its American context.

In line with Judge Mayer's thinking, the government argues that business methods are not technological in nature, and are thus ineligible subject matter. Amazon counters by saying that the "technological" requirement has no basis in Canadian law, and that the government is improperly trying to adopt it from European patent statutes that do not resemble our domestic patent system. There are also contrasting submissions regarding the definition of "art" under s. 2, with the government relying on a definition from Lawson v. Commissioner of Patents that requires a "change in character or condition" similar to the machine-or-transformation test from Bilski.

All in all, the USPTO decision to allow the one-click patent will likely have little effect on the upcoming litigation in Canada. The major issue in the US, obviousness, was already found in favour of Amazon in Canada through application of the Beloit test. However, in both Bilski in the US as well as Amazon in Canada it will be very interesting to compare the scope given to the definition of "invention", and whether the courts decide to impose a requirement that patents relate to technological or scientific subject matter.