Appeal Granted by Federal Court for 1-Click Patent Application

With a hat-tip to my young colleague, Michael Ladanyi:

While the decision is not yet posted online, according to the Federal Court website,’s appeal of the Commissioner’s Decision denying a patent for its 1-click purchasing was granted today. The status update giving notice that the appeal was granted can be seen here. The application describes purchasing items over the Internet using a single-action by transmitting a client identifier associated with information about a buyer.

Here is the full text of the status update posted online today:

Reasons for Judgment and Judgment dated 14-OCT-2010 rendered by The Honourable Mr. Justice Phelan Matter considered with personal appearance The Court’s decision is with regard to Appeal Result: granted Filed on 14-OCT-2010 certified copies sent to parties Transmittal Letters placed on file. Final Decision Certificate of Judgment entered in J. & O. Book, volume 1102 page(s) 297 – 298


  1. Here is the decision itself and a comment from a knowledgeable commentator of the decision’s significance:

    The patent bar should be pleased with the Federal Court decision. The Federal Court held that the Commisioner of Patents’ rejection of’s patent application on the basis of non-patentable subject matter was not supported by Canadian law. Instead of the Commissioner’s form and substance approach, the Federal Court affirmed that the test to determine whether an art or “business method” is patentable is as set out by Progressive Games: (i) it must not be a disembodied idea but have a method of practical application; (ii) it must be a new and inventive method of applying skill and knowledge; and (iii) it must have a commercially useful result.

    The Federal Court took a broad interpretation of “a method of practical application” saying that’s claims are patentable because the “‘physical effect’, transformation or change of character resides in the customer manipulating their computer and creating an order. It matters not that the ‘goods’ ordered are not physically changed.” This is generally in agreement with the U.S. Supreme Court decision in Bilski which held that a business method may be patentable as long as it is not an abstract idea, law of nature, or natural phenomena. According to the Federal Court, we must not “restrict the patentability of practical applications which might, in light of today’s technology, consist of a slightly less conventional ‘change in character’ or effect [than] through a machine such as a computer”. The Federal Court held that there is not, nor has there ever been, a statutory exclusion for business methods in Canada: “[To] implement a business method exception would be a ‘radical departure’ from the current regime requiring parliamentary intervention”. Furthermore, the Federal Court rejected the Commissioner’s “novel and unnecessary requirement for patentability” that what has been added to human knowledge must be technological in nature. As no such requirement exists in Canadian jurisprudence, “[it] was not within the Commissioner’s jurisdiction to introduce one.” “Technology is in such a state of flux that to attempt to define it would serve to defeat the flexibility which is so crucial to the Act”.

    So as long as a claim is not directed to an abstract idea or scheme, but rather has a practical application or embodiment, then it may be patentable in Canada.

    But expect the Commissioner to appeal. It’s not over yet.

  2. OMG. At the heart of this decision, one finds this:

    [73] The Court finds that a purposive construction of the “system claims” (e.g. claim 44 and its associated dependant claims) clearly discloses a machine which is used to implement’s one-click ordering system. The described components (e.g. a computer) are essential elements in implementing an online ordering process. This is not merely “a mathematical formula” which could be carried on without a machine or simply a computer program. A machine is patentable under s. 2 of the Patent Act. The Commissioner herself found that “in form” the claims disclosed such an invention; it was only when she took a second step to subjectively consider the “substance” that she found otherwise. As discussed, this is unsupported in law. The Court therefore finds the machine claims to be patentable subject matter.
    [74] Turning to the process claims, the Commissioner clearly erred by “parsing” the claims into their novel and obvious elements in order to assess patentability. When viewed as a whole it is clear that the claimed invention is a process which uses stored information and ‘cookies’ to enable customers to order items over the internet simply by ‘clicking on them’. It is accepted that the “oneclick” method is novel; the Court finds that an online ordering system which facilitates this adds to the state of knowledge in this area.
    [75] The new learning or knowledge is not simply a scheme, plan or disembodied idea; it is a practical application of the one-click concept, put into action through the use of cookies, computers, the internet and the customer’s own action. Tangibility is not an issue. The “physical effect”, transformation or change of character resides in the customer manipulating their computer and creating an order. It matters not that the “goods” ordered are not physically changed.

    Seriously, folks, that’s all there is. Who here thinks this judge has ever written a program?