La Commission d’appel des brevets a rejeté la demande de brevet no. 2,246,933 d’Amazon.com, Inc. portant sur son célèbre procédé d’achat en ligne “one-click” pour lequel un brevet équivalent a été émis aux États-Unis en 1999.
Contrairement Ã l’Examinateur, la Commission d’appel a trouvé que les 75 revendications au dossier étaient nouvelles et inventives, mais a confirmé les conclusions de l’Examinateur Ã l’effet qu’elles ne décrivaient pas de la matière brevetable au sens de l’article 2 de la Loi puisqu’elles concerneraient une méthode d’affaire.
En espérant maintenant qu’Amazon va amener la cause devant la Cour fédérale…
[ 9 ] Claim 1 provides for storing a client identifier on a client system, displaying item
information and an indication of a single-action to be performed for activating
single-action ordering when an item is to be ordered, and includes the identifier
in the request to order the item so that the identifier identifies account
information previously supplied by the user. Claim 1 also provides for changing
account information by logging in to the server system. Claim 1 is as follows:
1. A method in a client system for ordering an item, the method comprising:
receiving from a server system a client identifier of the client system;
persistently storing the client identifier at the client system;
when an item is to be ordered,
displaying information identifying the item and displaying an
indication of a single action that is to be performed to order the identified
in response to the single action being performed, sending to the
server system a request to order the identified item along with the client
identifier, the client identifier identifying account information previously
supplied by a user of the client system wherein the user does not need to
log in to the server system when ordering the item; and
when account information is to be changed,
coordinating the log in of the user to the server system;
receiving updated account information; and
sending the updated account information to the server
whereby the user does not need to log in to the server system when
ordering the item, but needs to log in to the server system when changing
previously supplied account information.
[ 14 ] Claim 44 sets forth a client system for ordering, stating:
44. A client system for ordering an item, comprising:
a component that receives from a server system a client identifier
of the client system and that stores the client identifier persistently;
a component that orders an item by displaying information
identifying the item along with an indication of a single action that is to be
performed to order the identified item and by sending to the server system
a request to order the identified item along with the client identifier, the
client identifier identifying account information previously supplied by a user
wherein the user does not need to log in to the server system when ordering
the item; and
a component that updates account information by coordinating the
log in of the user to the server system, receiving updated account
information from the user, and sending the updated account information to
the server system.
[ 20 ] The Final Action dated June 1st, 2004 gives rise to the following questions:
1 Are claims 1-75 obvious under Section 28.3 of the Patent Act?
2 Are claims 1 to 75 directed to non-statutory subject matter under Section
2 of the Patent Act? What is the approach to be followed?
[ 21 ] In the Final Action, the Examiner cited the following prior art:
– Creating the Virtual Store, pages 118 to 121 and 326, M. Ye il, John
Wiley and Sons, 1997.
– Cookies – What every web designer should know, Journal of Design
The Examiner’s position
[ 27 ] The Summary of Reasons forwarded to the Applicant maintained the rejection of
claims 1 to 75 for being obvious in view of Ye il and the common knowledge of
using client identifiers for on-line purchasing methods as taught by the Journal of
[ 28 ] The Examiner argued that the claimed ordering method was obvious, stating in
store a client identifier on the client system to enable ordering items,
with a single click, without logging in to the server system. Ye il teaches
a system and method of ordering items on-line whereby registration may
shoppers. Shoppers are not required to log on using a password or a
code to make a purchase (page 121). Ye il also mentions the idea of an
instant buy option (page 326) whereby merchants can provide shoppers
with an instant buy button for some or all items, enabling them to skip
checkout review. Ye il’s previous teachings regarding cookies and their
involvement within Web stores implies that the Instant Buy option can
be implemented using these techniques because it is obvious that the
user is not required to logon to make a purchase. Thus, on-line methods
and systems for ordering an item which allow a user to order an item by
a single action are clearly outlined in the prior art of Ye il. …
[ 72 ] From statements made at the Hearing, the Applicant submits that the claimed
invention distinguishes over the prior art, in respect of:
i. The feature of single-action ordering without checkout steps and
without having to re-enter purchaser-specific account information in
a separate page for additional orders;
ii. A new use of a cookie, in particular, to retrieve purchaser-specific
account information (a unique user’s billing/shipping information)
that was previously stored;
iii. The advantage of a registered user being able to order without
logging in, while retaining the advantages of being a registered
iv. The advantage or benefit of computer resource overhead reduction
because fewer steps are needed to place an order;
v. Additional subsidiary features:
(1) user log in for changing user account information;
(2) automatic combination of multiple orders into a single order;
(3) displaying an indication that an order can be cancelled
within a time interval.
[ 77 ] In consideration of Ye il and the Applicant’s statements at the Hearing, the
Board concludes that the manner of applying client identifiers in the instant
application was conventional or well known on the claim date.
[ 81 ] It is not a material factor, in the Board’s opinion, whether the information being
associated with a client identifier identifies a unique user, items of interest to a
user, or other personal information which may be on hand at the server about
that user, for example, information kept in a subscription site where that user is
registered. That a server can recognize a unique user by using a cookie, and
make use of that recognition, is the technological capability or effect which is
reflected in the claimed invention. This technological capability was known
before the claim date. The difference in the type of information is not patentably
[ 83 ] The Board finds that the particular use of a cookie to retrieve purchaser-specific
account information that was previously stored, is obvious.
Single-Action Ordering (one-click ordering)
[ 88 ] The Examiner cited Ye il, page 326, and more specifically the paragraph entitled
“Instant Buy Option”. This page is included in Appendix F, “The Netscape
Merchant System” [pages 321 to 337]. This Netscape System is comprised of a
group of computer programs which allows a seller to set up on-line shopping and
to keep track of sales and inventory.
[ 89 ] At the Hearing, the Applicant emphasized that the paragraph on page 326 of
Ye il eliminates only the checkout review (i.e. the shopping basket review
stage), but does not suggest single-action ordering.
[ 90 ] The single paragraph on page 326 to which the Examiner refers reads as
Instant Buy Option
Merchants also can provide shoppers with an Instant Buy button for
some or all items, enabling them to skip checkout review. This provides
added appeal for customers who already know the single item they want
to purchase during their shopping excursion
There is no further description of how this feature works.
[ 93 ] The Board concludes that Ye il does not disclose performing a single action to
instantly order an item, as set out in claims 1 to 75.
Other benefits and advantages
[ 94 ] There is no suggestion in the prior art to modify a subscription-based shopping
model such that with one-click, an identifier (cookie) is sent in conjunction with
the product ordering information, thus retrieving purchaser-specific account
information, so that the order is instantly placed.
entered by a user in a past session, based on the recognition of that user’s client
identifier. However, that is not enough to find that, in this instance, the skilled
person given the general problem of streamlining the traditional ordering
process, would have been led to tie an Instant Buy button in the Netscape
System with cookie (identifier) technology, to instantly place an order.
Findings: Section 28.3
[ 99 ] The Board finds that the skilled technician would not have been lead directly and
without difficulty to conceive of what has been claimed in claims 1 to 75.
The approach to assessing obviousness set out in Sanofi
[ 100 ] Subsequent to the Hearing, the Supreme Court of Canada rendered its decision
in Sanofi [supra], in which the Court set out the approach to be followed in
assessing obviousness, as follows:
 It will be useful in an obviousness inquiry to follow the four-step approach first
outlined by Oliver L.J. in Windsurfing International Inc. v. Tabur Marine (Great Britain)
Ltd.,  R.P.C. 59 (C.A.). This approach should bring better structure to the
obviousness inquiry and more objectivity and clarity to the analysis. The Windsurfing
approach was recently updated by Jacob L.J. in Pozzoli SPA v. BDMO SA,  F.S.R.
37,  EWCA Civ 588, at para. 23:
In the result I would restate the Windsurfing questions thus:
(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot
readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as
forming part of the “state of the art” and the inventive concept of the
claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do
those differences constitute steps which would have been obvious to the
person skilled in the art or do they require any degree of invention?
[ 102 ] Using the four step Windsurfing/Pozzoli approach in Sanofi, the conclusion is the
same as that reached in our findings above, which is that claims 1 to 75 are not
STATUTORY SUBJECT MATTER: SECTION 2
The Applicant’s response
[ 112 ] The Applicant stated that the claims pertained to statutory subject matter, stating
With respect to the statutory subject matter objection, the Examiner
contends that “[t]here is no new learning or knowledge contributed to the
state of the art or the prior art that is not already taught or known by Ye il
and the Journal of Design Science to the art of internet technology.” This
appears to be a reiteration of the Examiner’s obviousness rejections which,
as discussed above, are based on a mischaracterization of Ye il.
The Examiner is respectfully requested to consider the most recent decision
of the Supreme Court of Canada which addresses this issue, Harvard
College v. Canada (Commissioner of Patents), (2002) S.C.C. 76 (referred to
herein as Harvard Mouse). In Harvard Mouse, the Court was asked to
decide whether claims directed to a higher life form fell within the meaning
of the phrases “manufacture” or “composition of matter” in Section 2. The
Court decided that while the definition of Section 2 is broad, these terms do
not encompass higher life forms. The claims of the patent at issue in
Harvard Mouse which recited the method by which the higher life forms
were produced were originally allowed by the Examiner (and were never an
issue at trial), because methods clearly fall within the meaning of the
term”process” in Section 2. The Court made it clear that the words of
Section 2 of the Patent Act are to be read “in their grammatical and ordinary
If the Examiner’s statement that “[t]he Office considers a method to produce
an essentially economic result in relation to trade, commerce or industry,
etc. when that method is a method of operation of an inventive machine or
when that method manufactures or constructs a vendible product” is correct,
then the Applicant submits that the Office’s characterization of an essentially
economic result is narrower than can be supported by the Patent Act, Patent
Rules and the relevant decisions of the Courts. For example, in Lawson v.
Commissioner of Patents (1970), 62 C.P.R. 101 at 109-110, the Court
In the earlier development of patent law, it was considered that an
invention must be a vendible substance and that unless a new mode
of operation created a new substance the invention was not entitled
to a patent, but if a new operation created a new substance the
patentable invention was the substance and not the operation by
which it was produced. This was the confusion of the idea of the end
with that of the means. However, it is now accepted that if the
invention is the means and not the end, the inventor is entitled to a
patent on the means. (emphasis added)
Furthermore, as stated above, the methods claimed in this application are
directed to allowing a user to order an item by a single action. Such
methods may be embodied in a vendible product, such as a computer
system or computer program product which allows users to make orders by
performing a single action.
[ 122 ] At the Hearing, the Applicant also stated that what has been added to human
knowledge in the claimed invention is:
– the capability for a registered user to order products online without
– the capability to order within that context by means of a single-action; a
new and improved way of ordering;
– eliminating the need for the user to transmit as much information
(passwords, account information);
– a reduction in computer resource overhead at the server because fewer
actions are processed; and
– improved security of the ordering method by eliminating the need for
transmitting sensitive personal information.
Legal principles – Statutory Subject Matter
[ 123 ] Section 2 of the Patent Act sets out the definition of invention as:
“invention” means any new and useful art, process, machine, manufacture
or composition of matter, or any new and useful improvement in any art,
process, machine, manufacture or composition of matter.
Approach to assessing subject matter
[ 124 ] The approach the Board will follow in assessing for patentable subject matter is
briefly set out below. The basis for this approach follows.
– Consider both the form and the substance of the claims
An assessment of patentable subject matter involves a consideration of
both the form and substance of the claims.
– Form of the claims
By “form” is meant what the language of a claim, on its face,
appears to be defining as the invention.
– Substance of the claims (What has been discovered?)
The approach to assess the substance is to fully understand the
nature of the claimed invention, and determine what has been
added to human knowledge [“what has been discovered”] by the
– Subject matter must fit the definition of a category
The judicial interpretation of each of the terms art, process, machine,
manufacture and composition of matter must be considered to assess
whether the subject matter of the claims fits under one of these
Change of character or condition
Of particular significance in the present application is the definition
of an art. Lawson v. Commissioner of Patents (1970), 62 C.P.R.
101 (Ex. Ct.) [Lawson] sets out that a patentable art must cause a
change in character or condition of some physical object.
– Excluded (non-statutory) subject matter
Certain types of subject matter are excluded from patentability. For
example, computer programs if the discovery involved is a method of
calculation, methods of medical treatment, higher life forms, business
systems and methods and professional skills and methods, have been
excluded by judicial interpretation of Sections 2 and 27(8) of the Patent
Act (Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34,  1 S.C.R.
902, at paragraph 133, dissenting [Schmeiser]).
– Non-technological subject matter is not statutory
Each of the five categories of invention inherently relate to subject matter
that is technological in nature. It follows that subject matter that is not
technological is not statutory subject matter, and cannot fit under one of
the categories of invention.
[ 125 ] To summarize the above, for a claim to be patentable, the form of the claim (the
claim on its face) must relate to one of the five patentable categories of invention
(art, process, machine, manufacture or composition of matter). Also, the form of
the claim must be neither excluded subject matter nor non-technological subject
matter. Similarly, the substance of the claimed invention, or “what has been
added to human knowledge”, must fit under one of the five patentable categories
of invention, and what has been added to human knowledge by the claim must
not be directed towards either excluded subject matter or non-technological
[ 133 ] Following the Supreme Court of Canada, the Board finds that the term “art” is
“not to be confined to new processes or products or manufacturing techniques”;
at the same time, it must be “an act or series of acts performed by some physical
agent upon some physical object and producing in such object some change
either of character or of condition”.
[ 134 ] A more recent judicial treatment of the term “art” is found in Calgon Carbon
Corp. v. North Bay (City), 2005 FCA 410, 45 C.P.R. (4th) 241. In this case,
Rothstein JA, writing the reasons for judgment of the Court, cited with approval
Wilson J.’s statement in Shell Oil that the word “art” in the context of the
definition of invention must be given its general connotation of “learning” or
“knowledge” as commonly used in expressions such as “the state of the art” or
“the prior art”.
[ 137 ] We conclude from our review of the jurisprudence discussing art that an act or
series of acts that do not constitute a practical application of scientific or
technological knowledge do not fit the definition of a patentable art. A practical
application of knowledge necessarily implies an act or series of acts resulting in
a change of character or condition of a physical object.
[ 138 ] Finally, a process is similar to an art, as it involves the application of a method to
a material or materials. [Commissioner of Patents v. Ciba Ltd. (1959), 30 C.P.R.
(1st) 135 (S.C.C.) at paragraph 15.
[ 139 ] Thus, where the claimed invention, in form or in substance, is neither a physical
object (a machine, manufacture or composition of matter) nor an act or series of
acts performed by some physical agent upon some physical object to produce in
that object some change of either character or condition (art or process), it is not
Excluded subject matter: Business methods are not patentable
[ 140 ] As noted earlier, certain types of subject matter are excluded from patentability
in Canada. A claimed invention which in form or in substance amounts to a
business method is excluded from patentability.
[ 141 ] In Schmeiser, Arbour J. (dissenting in part) summarized the state of excluded
subject matters in Canada, stating:
133 Subject matters that are specifically precluded by statute from patent
protection are natural phenomena, laws of nature, and scientific principles: s.
27(8). Other subject matter has been excluded by judicial interpretation of s.
2 definitions of “invention” and “process” and s. 27(8). For example, the
following have been excluded: computer programs if the discovery involved
is a method of calculation (Schlumberger Ltd. v. Canada (Patent
Commissioner) (1981), 56 C.P.R. (2d) 204 (Fed. C.A.), aff’d (1981),  1
F.C. 845 (Fed. C.A.); methods of medical treatment (Tennessee Eastman
Co. v. Canada (Commissioner of Patents) (1972),  S.C.R. 111
(S.C.C.)); higher life forms (Harvard College, supra); business systems and
methods and professional skills and methods (State Street Bank & Trust Co.
v. Signature Financial Group Inc., 149 F.3d 1368 (U.S. Fed. Cir. 1998));
printed matter producing only an artistic intellectual or literary result (Re
Application of Boussac, CIPO, Commissioner’s Decision No. 143, March 10,
1973; mere human conduct or mental steps, or instructions (Re Application
of Ijzerman, CIPO, Commissioner’s Decision No. 254, July 4, 1975; Gale’s
Patent Application, Re (1990),  R.P.C. 305 (Eng. Patents Ct.), at 323);
and architectural plans (Application No. 995 for Townhouse Building Design,
Re (1979), 53 C.P.R. (2d) 211 (Can. Pat. App. Bd.)). These examples
demonstrate that it is not unusual for courts and the Patent Office to
interpret provisions of the Patent Act so as to exclude subject matter from
Form of the claims
[ 167 ] Independent claims 1, 19, 33, 51, 60 and 68 set out “A method in a client
system for ordering an item” and “A method in a computer [system] for ordering
items”. These claims define steps to place orders and facilitate administrative
aspects of ordering, such as order cancellation, combining orders, and changing
account information. These claims, on their face, are directed at a method for
the purchase of goods, and as such, are claiming a method of doing business.
Therefore, claims 1 to 43 and claims 51 to 75 are directed to excluded subject
[ 173 ] As stated earlier, system claims 44 to 50, by form, are directed to a physical
object. However, the substance of these claims is the same as the method
claims (claims 1 to 43 and claims 51 to 75). Therefore, claims 1 to 75 must fit
under the category of art or process in order to qualify as statutory subject
[ 175 ] Applying what is stated in Lawson, products or goods are offered for sale in the
claimed invention, and what is added to human knowledge is a change to the
character or condition of how the order for a product is actually placed and
processed. The products or goods are not changed. That is, there is no change
either of character or of condition to any physical object itself by the act of
ordering the product in one way or another.
[ 181 ] Returning to the instant application, concepts or rules for the more efficient
conduct of online ordering, are methods of doing business. Even if these
concepts or rules are novel, ingenious and useful, they are still unpatentable
because they are business methods. Therefore, the substance of the claimed
invention (claims 1 to 75) is excluded because it amounts to a method of doing
[ 182 ] The Board is aware that there may have been instances of patents issuing for
business methods. If, however, that practice was inconsistent with a proper
interpretation of the Patent Act, then it must be corrected. Policy and practice
are not matters for stare decisis, and should be changed if found to be wrong.
Is the substance of the claims non-technological in nature?
[ 184 ] The substance of the claimed invention is non-statutory if no technological
innovation has been added to human knowledge. A technological innovation
may be provided by a technological advantage, or a technological solution,
which typically arises from solving a technical problem. Of course, the solution,
problem or advantage must have been something that was added to human
[ 193 ] What is new in feature i. is that the client system will supply its client identifier
(cookie) to the server system, and the server retrieves the purchaser-specific
account information, and causes an order to be made. This new use of the
cookie, in the Board’s opinion, is not technological and does not realize a further
technical effect that can be said to have been added to human knowledge.
[ 194 ] From our analysis above, the substance of the claimed invention is not
technological in nature. Claims 1 to 75 do not add anything to human
knowledge which is technological and are therefore non-statutory. We have
been careful to review the practical implementation underlying the ordering
method, and in our view it does not add to human knowledge anything that is
technological in nature.