Utility Requirement in Canada

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Section 2 of the Patent Act:

“invention” means

any new and useful art, process, machine,

manufacture or composition of matter, or

any new and useful improvement in any art, process,

machine, manufacture or composition of matter.

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“Consolboard”:

“There is a helpful discussion in Halsbury's Laws of England, (3rd ed.), vol. 29, at p. 59, on the meaning of "not useful" in patent law. It means "that the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do".

Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. (1981), 56 C.P.R. (2d) 145 (S.C.C.) at

160, quoting from Halsbury’s Laws of England, (3rd ed.), vol. 29

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Level of Utility

“... it is sufficient utility to support a patent that the invention gives either a new article, or a better article, or a cheaper article, or affords the public a useful choice.”

An invention’s commercial utility does not mater, “unless the specification promises commercial utility”

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Promise of Utility• when a patent makes an explicit promise of utility,

the utility will be measured against that promise

• question of law

• Not every patent contains an explicit promise of a specific result since there is no obligation on the part of the inventor to disclose the utility of his invention in the patent.

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Utility

• demonstrated

• soundly predicted

as of the filing date

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• Promise of Utility

• Demonstration of Utility

• Sound Prediction

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Promise of Utility:

• “the promise should be properly defined, within the

context of the patent as a whole”

• usually express statements of the description

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What is Construed as a Promise of Utility:

“carboxyalkyldipeptides which are useful as inhibitors of angiotensin-converting enzyme and as anti-hypertensive agents.” (Yes/No)

“[i]t is a particular object of the present invention to provide aromatase inhibitory compounds with fewer undesirable side effects than aminoglutethimide”.(No)

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Demonstrated Utilityno requirement to prove demonstrated utility in the

disclosure.

disclosure requirements are set out in the

subsection 27(3) of the Patent Act

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Sound Prediction

(i) a factual basis;

(ii) an articulable and sound line of reasoning from

which the desired result can be inferred from

the factual basis; and

(iii) proper disclosure

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Factual basis

• not necessarily limited to experimental data/testing• “other factual underpinnings, depending on the

nature of the invention, may suffice” • e.g. scientifically accepted laws or principles, in data

forming part of the state of the art and which is referred to in the description, or in information forming part of the common general knowledge of the person skilled in the art

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an articulable and sound line of reasoning from which the desired result can be inferred from the factual basis

• “prima facie reasonable inference of utility”

• utility of AZT in humans was reasonably inferred

from the testing data obtained from human cell lines

and animals

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Plavix® (sanofi-aventis v. Apotex Inc., 2013 FCA 186 decision)welcome clarification to the relationship between the requirement that an invention be useful and the promise doctrine

• “… Courts should not strive to find ways to defeat otherwise valid patents.”

• The trial judge “erred in law in reading into the ‘777 patent a promise for use in humans on the basis of interferences”

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Plavix® (sanofi-aventis v. Apotex Inc., 2013 FCA 186 decision)• “A goal is not necessarily a promise”;

• distinction between statements made in the patent’s

disclosure originated from the foreign application

and statements of utility made in the claims

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Plavix® (sanofi-aventis v. Apotex Inc., 2013 FCA 186 decision)

• “The Supreme Court of Canada’s comments in Consolboard with respect to a promise of specific result were made in a case raising issues of demonstrated utility. I believe that one must be particularly prudent when one seeks to extend Consolboard’s principles to statements clearly based on expectations.”

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Xiang LuTel: +1-613-786-8680Email:xiang.lu@gowlings.com