Whereas at one time, inventions could be characterized as falling squarely within one field, inventions may now cross the boundaries of numerous fields. This trend is also observed in litigation. A 2012 decision of the Federal Court of Canada confirms the boundaries between fields of art have indeed blurred.
In Eurocopter v. Bell Helicopter Textron Canada Limitée, 2012 FC 113, the defendant was successful in invalidating claims directed to a helicopter landing gear based on a lack of sound prediction defence.
While the lack of sound prediction defence is common in proceedings involving inventions in the pharmaceutical field, it was not previously considered as an effective strategy in the case of a mechanical invention such as helicopter landing gear.
The Federal Court concluded that "an explicit promise to reduce drawbacks of prior art 'significantly'" had been made. The drawbacks were identified as:
- Elevated acceleration factors upon landing (load factors);
- Difficult frequency adaptation with respect to ground resonance; and
- High landing gear weight.
The Court concluded that this "is the promised utility of the disclosed invention."
The Court held that the patentee had failed to provide enough evidence to establish the claims at issue had a demonstrated utility, or that they were based on a sound prediction.
As a result, a number of claims were invalidated because, based on the promised utility, there was no demonstrated utility or otherwise sound prediction of utility in the description.
While the decision is currently under appeal, the take-home lesson for now is that inventions in the mechanical or IT fields are not immune from attacks on their validity based on grounds such as sound prediction. Accordingly, care must be taken in drafting patent applications to ensure that statements that could be construed as being directed to the promised utility of the invention are kept to a minimum, and that the bar of promised utility is set as low as possible.
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