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, Inc2011 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 computer-implemented inventions.

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)) [1981] 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 deceptive.”

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 arts.

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 Canada.