The Rule Against Abstract Claims: A Critical Perspective on U.S. Jurisprudence

Résumé :

The previous part of this article reviewed the history and theory of the rule against abstract claims in Canadian law. This part examines the parallel U.S. doctrine, particularly as articulated by the U.S. Supreme Court decisions culminating in Bilski v. Kappos. The U.S. approach to the rule against abstract claims is important both because Canadian courts are willing to consider foreign law as persuasive authority and because the U.S. Supreme Court has provided a variety of clearly articulated principled explanations for its approach. This article argues that the doctrine set out by the U.S. Supreme Court is inconsistent with Canadian law, and that none of the rationales offered by the U.S. Supreme Court to support its approach are sound. The Canadian position, in contrast, is supported by compelling policy considerations. Consequently, U.S. Supreme Court jurisprudence should not be followed by Canadian courts. In particular, Bilski should not be considered persuasive authority in the ongoing Amazon.com litigation over the patentability of business methods. In addition, the decision of the Federal Court of Appeal in Schlumberger Canada Limited v. Commissioner of Patents, which is the leading Canadian case on patentability of computer programs, was wrongly decided because it followed problematic U.S. case law.