Canadian Lawyer

w w w . C A N A D I A N L a w y e r m a g . c o m A u g u s t 2 0 1 4 53 time of filing," he says. McGill University Faculty of Law pro- fessor Richard Gold has filed an appli- cation to intervene as an amicus at the SCC hearing in November on two points: is Canada out of line with the rest of the world, and on "non-obviousness." He believes the non-obviousness test needs to be holistic in order to maintain the inter- nal balance of the Canadian Patent Act. "We can't take any one rule and isolate it from the rest — it really is about balancing out these various factors," he says. In the U.S., the term is referred to as "assertion of the utility" but in Canada it's the "promise of the patent," but they mean the same thing. Gold admits "sometimes judges get things wrong" and it's possible they got it wrong in the Eli Lilly cases but the notion that we identify what the asserted utility is dates back 200 years. Australia and New Zealand have the same principle. Gold takes great issue with Eli Lilly's position. In fact, he says its claim has "zero merit" and questions its statistics. "We went back and looked at the 53 cases they listed from 2005 [to] spring 2013 (a period in which there were at least 300 cases) when they filed leave to appeal at the Supreme Court and they claim 18 were invalidated due to utility but in fact what you find is out of those 18, utility was the deciding factor in eight of them," he says. "There were multiple grounds." Because most cases so far have been from the pharmaceutical industry, it has felt the impact most strongly, but it is an issue for anyone with a patent portfolio of significant value. For example, oil and gas is starting to catch up to pharma in terms of the number of cases. Skodyn says companies and their patent agents need to be aware of the promise issue when drafting patents now and be pre- cise about what you've invented and what you think it will do. "I would say to those patentees, 'you need to look at your portfolio from that perspective,'" says Skodyn. "For Canadian sectors in the post-Research in Motion world, oil and gas is our domestic patent area. A significant part of value now is in a com- pany's patent portfolio." Skodyn says Supreme Court Justice Marshall Rothstein, who is close to retirement, has been the driving force on patent law at the top court He specu- lates he might try to "unify the law" or clarify the issues. At the end of the day, when the SCC looks at the issue, Mehes is hopeful it will look at the facts and see there is no international standard and the Canadian law of utility is entrenched and hasn't changed significantly in the last decade. "The cases are fundamentally factual cases," she says. From his perspective, Norman says the SCC could "fix this" or Parliament could step in. "Lilly has a future in Canada and would like to get the pat- ent ship back on course but it would not obviate the need for us to carry on with our NAFTA claim because we're seeking damages from past conduct," he says. ntitled-3 1 14-07-15 9:41 AM

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