The decision of the U.S. Supreme Court in Alice v CLS Bank (573 U.S. ____ (2014)), and its impact on the
patent eligibility of computer-implemented inventions, has been the
subject of considerable commentary in the patent press. This
decision establishes a two-step approach in order to test whether
an invention is eligible for patent protection, and has particular
ramifications in the case where an invention can be described
merely as an abstract idea implemented on a generic computer.
In Canada, the patent eligibility of computer-related inventions
is also the subject of the Federal Court of Appeal decision in
Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328 ("Amazon"). Given that
many patent applications in the computer-related arts are filed in
both Canada and the United States, it may be worthwhile for
practitioners in either jurisdiction to explore what strategies
their colleagues across the border have been using, or plan to use,
when pursuing patent protection for data processing and other
Notably, the Federal Court of Appeal decision in Amazon, while
resulting in issuance of the patent in question and keeping the
door ajar for business methods patents in Canada, included certain
lines of reasoning that are interesting to point out, as they bear
a resemblance to views expressed by the U.S. Supreme Court in Alice
v CLS Bank.
In one example, the Amazon court considered an earlier decision
from 1981 in which a mathematical formula had been used in the
processing of seismic data (Schlumberger Canada Ltd. v Canada
(Commissioner of Patents))  56 C.P.R. (2d) 204). The Amazon
court stated that "[t]he claims in [the 1981 decision] were
not saved by the fact that they contemplated the use of a physical
tool, a computer, to give the novel mathematical formula a
practical application." In what can be considered a similar
view, the U.S. Supreme Court in Alice v CLS Bank also based itself
on vintage dicta (Gottschalk v Benson, 409 U. S. 63 (1972)) to
state that "simply implementing a mathematical principle on a
physical machine, namely a computer, [i]s not a patentable
application of that principle."
The panels of judges in both countries also seem to have adopted
almost indistinguishable views as to the contribution of patent
practitioners in the patenting process. In Alice v CLS Bank, the
U.S. Supreme Court indicated that it "has long "warn[ed]
. . . against" interpreting §101 "in ways that make
patent eligibility 'depend simply on the draftsman's
art,'"" while the Canadian Federal Court of Appeal in
Amazon warned of "the possibility that a patent claim may be
expressed in language that is deliberately or inadvertently
Thus, in spite of the many differences in the way in which
patent jurisprudence has evolved in Canada and the U.S., major
recent decisions in both countries dealing with patent eligibility
appear to reveal a similarity in terms of the hurdles applicants
can expect to face when seeking patent protection in the areas of
computers, software and business methods.
Viewed in a positive light, however, this apparent convergence
of judicial sentiment may present an opportunity to foster a closer
collaboration between practitioners in both Canada and the United
States. In particular, cooperative approaches may produce drafting
and prosecution strategies that, through their commonality, are
potentially more cost effective and ultimately may lead to a
stronger North American patent portfolio in the computer-related
Finally, it is interesting to note that the Supreme Court of
Canada has never taken up the issue of statutory subject matter in
the context of computers, software or business methods. Perhaps it
will remain this way if the strategies devised by Canadian patent
practitioners, with the added perspectives gained from their U.S.
confrères in dealing with the fallout of Alice v CLS Bank,
succeed in adequately protecting applicants' interests in
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
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