This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 4: Software and Digital Technology Patents
Federal Court of Appeal of Canada [2011]: Amazon.com, Inc. v Canada (Attorney General), 2011 FCA 328
Date of judgment: November 24, 2011
Issuing authority: Federal Court of Appeal
Level of the issuing authority: Appellate Instance (appeal from Federal Court decision which was an appeal of the Commissioner of Patents)
Type of procedure: Judicial (Administrative)
Subject matter: Patents (Inventions)
Plaintiff/Appellant: Attorney General of Canada; Commissioner of Patents
Defendant/Respondent: Amazon.com, Inc.
Keywords: Patentable subject-matter; Business method; Meaning of invention
Basic facts: This was an appeal of a decision of the Federal Court (“FC”), quashing a decision of the Commissioner of Patents (“Commissioner”) that refused to grant a patent to Amazon.com, Inc. (“Amazon”) for a one-click method of online purchasing. The Commissioner found the subject-matter claimed was not an “art” or “process” within the definition of an “invention” in section 2 of the Patent Act.
The Commissioner found the proposed invention failed three tests that it considered implicit in the meaning of “art”, namely (1) it did not add to human knowledge anything that was technological in nature; (2) it was merely a business method and a business method was not patentable; and (3) it did not cause a change in the character or condition of a physical object.
The FC rejected the Commissioner’s three tests for determining the existence of a patentable “art’. Instead, the FC applied a purposive construction to the claims, finding the use of a computer to be an essential element of the claim. As such, the FC found the definition of invention was met because the implicit requirement for physical existence or manifestation of a discernible effect or change was satisfied.
On appeal, the Federal Court of Appeal (“FCA”) dealt with the analytical framework for determining whether there is an invention under section 2 of the Patent Act.
The Attorney General of Canada argued that the Commissioner must, in every case, determine the “actual invention”, independent of the construction of the claims and whether it falls within one of the categories enumerated in the statutory definition of “invention”.
Amazon argued that the first step in the analysis is to construe the patent claims and that any attempt to identify the “actual invention” as an independent question is wrong in principle.
Held: The first step in the analysis is to construe the patent claims. The governing jurisprudence for claim construction applies, such that the Commissioner’s identification of the actual invention is required to be grounded in a purposive construction of the patent claims and not determined solely on the basis of a literal reading of the patent claims, or a determination of the substance of the invention. A patent application must be refused if the claim, construed purposively, describes something that is outside the enumerated categories in the statutory definition of “invention”.
In this case, the FC erred in conducting its own claims construction. As such, the FCA set aside the claims construction conducted by the FC and the matter was sent back to the Commissioner to be re-examined on the approach given.
Relevant holdings in relation to software and digital technology patents: To be an “art”, the proposed invention must (i) not be a disembodied idea but must be something with physical existence, or that manifests a discernible effect or change; (ii) it must be a new and inventive method of applying skill and knowledge; and (iii) it must have a commercially useful result.
The three criteria identified by the Commissioner should not be applied as a test. Rather, each case turns on its own facts and arises in the context of the state of knowledge at a particular point in time and in the context of the dispute.
With respect to the three criteria, the FCA held that: (1) a requirement that all subject-matter be scientific or technological in nature should not be applied as a stand-alone test; (2) a novel business method may be an essential element of a valid patent claim; and (3) because a patent cannot be granted for an abstract idea, it is implicit in the definition of “invention” that patentable subject-matter must be something with physical existence, or something that manifests a discernible effect or change.
Relevant legislation: Section 2 and 27(8) of the Patent Act (CA068)