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LEGAL REPOR T: INTELLECTUAL PROPERT Y other personal information. The approach helped set Amazon apart from its com- petitors in the early days of e-commerce and is cited as a key to its early success. The Patent Board rejected Amazon's initial application, ruling its ordering invention was obvious and its applica- tion was intended to seek a patent for an unpatentable process. In March 2009, the Canadian Patent Appeal Board issued a "surprising decision," wrote Stikeman Elliott LLP's Eugene F. Derényi in a blog post. Unlike the first decision, the appeal board found the claimed invention was not obvious, but still rejected the application, stating: "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." Derényi notes the appeal board held that in order for an "art" or "process" to be patentable, it must "cause a change in the character or condition of some physi- cal object and producing in such object some change of character or condition." According to the board, the one-click invention merely confers a change to the ordering process rather than a change to the products offered for sale. The decision seems decidedly last century in light of the computer-led information revolution. The board also concluded a patent should not be issued to Amazon for the one-click invention because it did not constitute patentable subject matter. In essence, the board stated unequivocally that in its view, a pure business method that has no "technological effect" is not patentable in Canada. This is contrary to the CPO Manual of Patent Office Practice, which declares that business methods are not automatically excluded from patent- ability by jurisprudence or statute. In its decision, the board considered and reject- ed that statement from the CPO manual. Amazon did secure a U.S. patent for its one-click ordering process in 1999 and has since then survived further scrutiny from the USPTO. It has also unsuccessfully sought a patent for one-click ordering in Europe. Not only will the Amazon appeal be closer to home, it will potentially have more applicability for the Canadian IP community than Bilski, says Mizera. "The Bilski case was a much more clear-cut case where it was a much more abstract idea that was trying to be pro- tected through a patent. The Amazon.com [case] has a bit more software involved in it so it will be interesting to see because a lot more of possible client inventions that we receive have some software compo- nents to them." In an interesting twist, the appeal board's decision used Bilski (pre-SCOTUS) as support for its ruling. "Basically they cited the 'machine or transformation' test and they used that to state one-click was not patentable," says Abecassis. "This case is the first serious case on business method in Canadian jurisprudence. This is the first one that really deals with it." He predicts Bilski's effect will be felt on both sides of the border in the future. "For sure there is going to be consequence in Canada from the Bilski decision." 48 OC T O BER 2010 www. C ANADIAN Law ye rmag.com ntitled-1.indd 1 9/17/10 11:19:43 AM