No More Promise Land

Jul 4 2017 By Lawrence Chan

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On June 30, 2017, the Supreme Court of Canada released its decision in AstraZeneca Canada Inc. v. Apotex Inc. (2017 SCC 36), a patent case involving the so-called “Promise Doctrine”. This case has been previously discussed on this site, both with respect to the oral arguments before the Supreme Court and the decision below by the Federal Court of Appeal.

 

In its highly-anticipated decision, the Supreme Court unanimously overturned the Federal Court of Appeal, and in doing so, did away with the Promise Doctrine that had been established by the Federal Courts. This decision is a victory for pharmaceutical companies, which have seen a number of their Canadian patents invalidated by the Federal Courts because of the Promise Doctrine.

 

The Promise Doctrine stated that if a patent promised a specific utility, that promise must be fulfilled in order for the patent to satisfy the requirement for utility. The Supreme Court held that the Promise Doctrine was too strict.  There was a danger that an otherwise worthy invention could be deprived of patent protection because of a simple unintentional overstatement in the specification.  This was particularly true where multiple promised uses are described.  Under the previous Promise Doctrine, all of those promises must be satisfied in order for the patent to meet the utility requirement.

 

Instead, the Supreme Court stated that the correct test for assessing utility was to first identify the subject matter of the invention as claimed. Then, it must be determined whether that subject matter is useful, established either through demonstration or sound prediction as of the filing date.  With respect to the second part of the test, no specific degree of usefulness is required – “…a scintilla of utility will do”.  Furthermore, even though utility of the subject matter is a requirement, there is no requirement that the utility be disclosed.

 

With this decision, the Supreme Court has seemingly moved the legal landscape (insofar as utility is concerned) back to its earlier 1981 decision in Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd.  In doing so, the Supreme Court has ended the Federal Courts’ brief detour into the “promise” land.