[3] Applying this approach to the facts, the Commissioner found that, although Amazon.com's claim, on the fact of its text, was directed towards a "machine", a patentable subject matter, the Commissioner found that the substance of all its claims were directed to streamlining the process of sales and reaping benefits flowing from it, and therefore constituted a "business method".
[4] In Monsanto Canada Inc v Schmeiser, Justice Arbour, in dissent, had listed a number of examples where courts had excluded subject matter from patentability, including (incorrectly[5]) "business systems and methods".
[6] The Commissioner relied on Justice Arbour's observation to find that business methods had no historical basis of patentability in Canada, and were therefore per se unpatentable.
The Commissioner dismissed that the Amazon.com's invention provided any technological benefits and advances because Amazon.com's decision to proceed with one-click shopping with business in nature and yielded only a "convenience advantage".
[9] First, the Court found that the "form and substance" formulation and analysis of Amazon.com's claims departed from the approach articulated by the Supreme Court of Canada in Free World Trust v Électro Santé Inc[10] and Whirlpool Corp v Camco Inc,[11] which stated that the identification of the invention must be done through a purposive construction of its claims.
Instead, it noted that Amazon.com's claim may still fail if, per Schlumberger Canada Ltd v Canada (Commissioner of Patents),[18] the only novel aspect of the claimed invention was the business method and the business method was interpreted as a "mere scientific principle or abstract theorem", which cannot be the subject matter of an invention according to section 27(8) of the Patent Act, mentioned above.
Justice Phelan did not have expert evidence before the Federal Court from persons skilled in the art, and therefore it would have been more appropriate for the Commissioner to re-examine the claims, given the expertise of the Patent Office.
CIPO published new guidelines for determining whether an invention constitutes statutory subject matter based on a purposive construction of the claims.