In Canada, valid patents must have "utility" – a
similar concept to "industrial application", as required
in European patent applications. However, in some cases, utility
cannot be fully verified by tests at the time of filing the patent
application. In these instances, utility must be soundly
In Sanofi-Aventis v Apotex (2013 FCA 186), the Federal
Court of Appeal (FCA) confirmed and updated the "promise of a
patent" doctrine by qualifying that such a promise must be
explicit within the patent application (as
outlined in our previous article).
This doctrine has been subsequently developed by the FCA, such as
in the 2015 decision relating to AstraZeneca's Canadian Patent
2,139,653 for esomeprazole (NEXIUM) (AstraZeneca Canada v
Apotex [2015 FCA 158]), in which the FCA found the patent to
be invalid for lack of utility because it failed to meet at least
one promise identified by the court in the application's
description. These subsequent decisions shed light on what is
considered an explicit promise.
The Federal Court has clarified that there is a difference between
a promise and a goal. Differentiating between goals and promises is
a question of characterisation. Goals merely describe potential
uses of the invention. Promises are explicit and define guaranteed
or anticipated results from the patent.
Insofar as the NEXIUM patent was concerned, the Court was of the
opinion that the particular patent promised an improved therapeutic
profile. This interpretation was based on the ordinary meaning of
the auxiliary verb "will" in a passage of the
description. The courts were not convinced that the verb could be
read as indicative of a goal of the invention, but rather
considered the verb to amount to a promise.
Hence, while the FCA previously interpreted the utility requirement
that a claimed invention be "new and useful" to mean that
it has practical utility as opposed to theoretical utility, the
post-2013 FCA decisions indicate that special attention should be
paid to avoid any wording in the description that may be read as a
As the Supreme Court of Canada said 35 years ago, an inventor must
say what it is they claim to have invented, but are not obliged to
extol the effect or advantage of their discovery, if they describe
their invention so as to produce it.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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