Does Amazon Provide Clarity to Patent Applicants in Canada?

• Published in: Intellectual property journal Vol. 23; no. 1; p. 125
• Main Author: Hoicka, Leonora
• Format: Journal Article
• Language: English
• Published: Toronto HAB Press Limited 01.12.2010
• Subjects: Algorithms; Computers; Digital rights management; Information technology; Inventions; Jurisdiction; Litigation; Software; Canada; United States > US
• ISSN: 0824-7064

Courts and patent examiners in the US and Canada have struggled with the test for patent subject-matter eligibility of computer-implemented inventions for almost 40 years. This note discusses the US and Canadian situations together because, in practice, Canadian applicants overwhelmingly seek patent protection in the US as a complement to Canadian protection, whether or not they seek protection in any other jurisdiction. It would therefore benefit Canadian applicants greatly to have a reasonably clear and consistent expectation of what inventions could at least pass the threshold test for patent-eligible subject-matter in both jurisdictions, whether or not such inventions later stand up to the slightly different approaches to novelty, non-obviousness and sufficiency of disclosure analyses prevailing in the two countries. Amazon has certainly set out the issues in a clear manner, but ultimate clarity arid certainty for patent applicants in Canada may need to wait for a decision from the Federal Court of Appeal or the Supreme Court of Canada.