The Federal Court of Appeal has released its decision in Amazon.com on patentable subject matter (PDF). The Court held that determination of patentable subject matter must be based on a purposive construction of the claims and discussed the requirements for patentability but remanded the application back to the Commissioner for claim construction and reconsideration.
The decision is available at 2011 FCA 328. The Court largely endorsed Justice Phelan’s discussion on what constitutes a patentable subject matter but criticized the “physical application” aspect of the discussion and his claim construction of the Amazon.com application without a full record.
The Court allowed Amazon.com’s appeal from the Commission and requires the Commissioner to re-examine the patent application on an expedited basis in accordance with its reasons.
The decision being appealed is the decision of Justice Phelan in Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011.
Update: Some commentary on the decision is available by:
- Norman Siebrasse at UNB
- Bereskin & Parr
- Fasken Martineau
- Smart & Biggar (counsel for Amazon.com)
- Norton Rose (counsel for the intervener)
[Updated: the first version of this post was written prior to obtaining a copy of the decision and based only on the docket entry.]
[Updated: the PDF link now goes to the official version of the decision as provided by the FCA.]
First, thanks to you, and to Smart & Biggar, for making this decision available so quickly (indeed, the Federal Court site had not made its decision available on Friday).
Second, I am shocked by the Court of Appeal’s statement that it is not in a position to make a decision as to the patentability of the claims in issue in the case before it. If the Court of Appeal cannot apply the law to a clear set of facts before it (viz. the patent claims, in the context of the four corners of the application before it) so as to make an important legal decision on the patentability of those claims, then who can? The Supreme Court of Canada? Surely not a bureaucrat who lacks both the knowledge and jurisdiction to do so.
In essence (and even without considering the murky “linguistic doublespeak” of the judgment), the Court of Appeal has abdicated its responsibility to decide the law on the case before it, and instead has handed it to a bureaucrat to do so, without there being a single reason, or justification, to have done so. The Commissioner has no more information, and cannot obtain any more relevant information, than the Court had before it.