The Rule Against Abstract Claims: A Critical Perspective on U.S. Jurisprudence
The Canadian Intellectual Property Review (CIPR) is a double-blind peer reviewed journal. It is sent to over 1,800 IPIC members at no cost and can be purchased by non-members for a fee. If you would like to browse the articles included in the CIPR, please consult our database below.
Any author, member or non-member can submit an article for consideration in the CIPR. The CIPR Editorial Board welcomes both short pieces (2,000 to 5,000 words) that may be included in the Notes section of the issue or longer, more in-depth articles. The maximum length of articles, including references, is 20,000 words. Articles may be submitted in French or English. Each article should be accompanied by a 150-word abstract.
All submissions undergo a double-blind review process: the reviewers are not given the authors' identities and the identities of the reviewers are shielded from the authors. Additionally, articles submitted must be original and must not have been previously published elsewhere.
If you would like to submit an article for an upcoming issue of the CIPR please contact admin@ipic.ca.
Canadian Intellectual Property Review
Share
The Rule Against Abstract Claims: A Critical Perspective on U.S. Jurisprudence
Issue: Volume 27 no 1
Author(s): Norman Siebrasse
Abstract:
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.
