Canada: The Promise Doctrine: Invalidated For Want Of Utility

In AstraZeneca Canada Inc. v Apotex Inc.,1 the Supreme Court of Canada revisited the requirement of utility in the definition of "invention" in s.2 of the Patent Act. The Federal Court and the Court of Appeal had held AstaZeneca's patent invalid because it failed to fully deliver on the promises made in the specification. The Supreme Court held that the application of the Promise Doctrine to an analysis of an invention's utility is ultimately the incorrect approach in law and thus AstraZeneca's patent was not invalid for want of utility.2

The Promise Doctrine

The Promise Doctrine finds its roots in the "False Promise Doctrine" from the United Kingdom in the early part of the 20th Century. At that time, patents in the UK were a grant from the Crown exercising its own discretionary power. It was presumed that the Crown granted patents on the entirety of the application being true. The courts would thus consider the patent on an invention which does not meet all its promises to be invalid, since they refused to second-guess the Crown's discretion by presuming the Crown would have granted the patent based on anything less than it did.3

The modern Promise Doctrine in Canada differs from this interpretation. As explained in Eli Lilly Canada Inc. v Novopharm Ltd.:"where the specification sets out an explicit "promise", utility will be measured against that promise.... The question is whether the invention does what the patent promises it will do".4 Where multiple promises have been made, even if only one of them is unfulfilled, then the utility requirement of the definition of an "invention" in s. 2 Patent Act is not met and the entirety of the patent becomes invalid.5

Rowe J, writing for a unanimous court in AstraZeneca, declared that using this doctrine undermines the interpretation of utility under the Patent Act and it "is not good law".6

Court's Analysis in AstraZeneca v Apotex

In AstraZeneca, the Court found the use of the Promise Doctrine in the analysis of a patent's utility to be "excessively onerous" as it raises the bar for the utility necessary for patent validity to the promises expressed therein and it requires that all promises of utility expressed be valid for the patent to be valid.7

On the first point, the Court found that the Promise Doctrine does not respect the scheme set out in the Patent Act as it conflates the requirement of utility in the definition of "invention" (s.2) and the requirement of an applicant to provide proper disclosure of the detailed specifications of the invention (ss.27(3)). These two parts of the Act serve different, albeit complementary, roles in the scheme of the Patent Act with the latter requiring inventors to share their knowledge with society and the former establishing the boundaries of the limited monopoly that inventors are granted over their knowledge. Effectively, using the Promise Doctrine in the assessment of utility under s.2 will require that any use disclosed under the specification requirement of ss.27(3) be "demonstrated or soundly predicted" at the time of filing, failing which a patent will be invalid.8

On the second point, the Court found that the Promise Doctrine is contrary to the Patent Act as its application requires that all promised uses be demonstrated or soundly predicted at the filing date. The Act only requires a single useful subject-matter though, meaning that the subject-matter is capable of an actual result, either demonstrably or through sound prediction. A mere "scintilla of utility" is sufficient to demonstrate utility under a s.2 analysis.9 In one case utility was stated to require only that "the wheels must go round."10 Invalidating patents for want of utility, on the basis of the Promise Doctrine could be unfair to inventors who would be giving up their knowledge without receiving the consideration of a limited monopoly.11

Commentary

An interesting observation in AstraZeneca is that the Court did not rely on any novel idea to invalidate the Promise Doctrine. In fact, the issue of conflation between s.2 and ss.27(3) had already been dealt with by Dickson J (as he then was) in Consolboard Inc v MacMillan Bloedel (Sask) Ltd, where the decision of the Court already differentiated between these two sections of the Patent Act. In AstraZeneca the Supreme Court found that the Promise Doctrine similarly conflated the section 2 requirement that an invention have utility with the disclosure requirements of ss. 27(3) as had been the case in Consolboard and thus the doctrine cannot stand.

The Supreme Court also criticised the "Promise Doctrine" for its focus on the description (disclosure) of the patent, and not the claims.12

Furthermore, the Court found that the ill effects of the Promise Doctrine do not outweigh its potential to dissuade inventors from overpromising, especially when overly broad claims or omissions "wilfully made for the purpose of misleading" are already grounds for invalidity under s.53 of the Patent Act.13 The Act also contains a provision under s.58 in which only claims found invalid are to be given no effect under the patent, rather than establishing the outright invalidity of the patent. That section also prevents overly broad patent applications, without compromising the integrity of the Act's scheme. There is thus no need to keep using the Promise Doctrine to prevent overly broad or deceptive claims in patents.

When assessing the utility requirement of s.2, courts must only find a "scintilla of utility", demonstrated or soundly predicted, in order to "prevent the patenting of fanciful, speculative or inoperable inventions".14 Given the number of recent decisions in which the Federal Courts applied the Promise Doctrine in a s.2 analysis of utility, this decision will ultimately change the courts' approach to this analysis and bring it in line with the words and purposes of the Patent Act, leading to more predictable outcomes for inventors. Now that the "Promise Doctrine" has been declared to be dead, it will be interesting to see if the provisions of the Patent Act referred to by the Supreme Court actually prevent applicants from engaging in speculation as to utility.

Footnotes

1. 2017 SCC 36 [AstraZeneca].

2. Ibid, at para 24.

3. Ibid, at paras 34, 35.

4. 2010 FCA 197 at para 76.

5. AstraZeneca, supra note 1 at para 31.

6. Ibid, at para 51.

7. Ibid, at para 37.

8. Ibid, at para 44.

9. Ibid, at paras 53-55.

10. The Mullard Radio Valve Company Limited v. Philco Radio and Television Corporation of Great Britain Limited, (1935), 52 RPC 261 (CA).

11. AstraZeneca, supra note 1 at para 51.

12. Ibid, at paras 31 and 53

13. Ibid, at paras 44-46.

14. Ibid, at paras 55, 57.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2017

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Peter E.J. Wells, C.S.
Sherif Abdel-kader
Thomas van den Hoogen
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.