Canadian Lawyer InHouse

JULY 2017 10 INHOUSE By Daniel R. Bereskin and Laura MacDonald, Bereskin & Parr LLP Intellectual Property I n a blog entitled The Patent Policy That Could Harm Canada's Patients, Laura Crist of the Glob- al Intellectual Property Center, U.S. Chamber of Commerce, condemned Canada's patent case law for requiring Canadian patents to achieve the promise set out in the patent specification. Al - though it is true that many patents, particularly in the pharmaceutical field, have been found invalid on this basis, it is also true that many pharmaceutical patents have been found valid and infringed, a point Crist con- veniently ignores. Canada has been on and off the United States Trade Representative IP "watch list" for years as not suffi- ciently respecting intellectual property rights of U.S. entities. However, the U.S. is hardly a paragon of virtue when it comes to respecting intellectual property rights of foreigners. For many generations before the U.S. be- came a net exporter of works protected by IPR, it was a pirate nation when it came to certain aspects of intel- lectual property protection. In 1891, U.S. copyright law for the first time granted U.S. copyright to non-U.S. authors, but there was a catch: The books of foreign authors had to be manufactured in the U.S. By the end of the Second World War, the U.S. became a net ex - porter of books, and it was not until then that the U.S. shifted its policy from protecting its domestic publish- ers to cautiously embracing global treaties. It took the U.S. until 1988 to adhere to the Berne Convention for the Protection of Literary and Artistic Works. Canada adhered to Berne 60 years earlier. With respect to patents, U.S. patent law discrimi - nated against foreign inventors for many decades. In interference proceedings, many foreign inventors had to prove that their inventions were reduced to practise in the U.S., which put them at a serious disadvantage relative to U.S. inventors. With this background, here's a brief summary of Ca - nadian law with respect to the promise doctrine. An invention must be useful to be patentable un- der Canadian law. If the patent specification does not promise a specific result, only a "scintilla of utility" is required. However, where the specification promises a specific result, utility will be measured against that promise, based on what is disclosed in the patent speci - fication at the filing date. This is particularly relevant in the case of pharmaceutical inventions, because the requirement of utility means that the drug for which a patent is sought must achieve the result promised in the specification. The "promise doctrine" is not new. It is rooted in a 1981 decision of the Supreme Court of Canada, Consol - board Inc v. MacMillan Bloedel (Sask) Ltd, in which the Court defined patent inutility as meaning "that the in- vention 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." Canadian courts continue to cite Consolboard for the definition of utility in Canadian patent law. Although the term "promise" was first introduced in Consolboard, Canadian courts have long recognized the principle of holding patentees to their assertions of utility. Holding patentees to their promises of utility serves important policy objectives. Requiring that statements of an invention's utility are true or soundly predicted to be true assures that patents reward innovation and are not granted based on mere speculation or guesswork. If that were otherwise, monopoly rights resulting from mere speculation could be enforced to prohibit others from pursuing promising lines of research or innovation. Canada's utility requirements also safeguard against pat - entees overstating the usefulness of their inventions and assure that the public receives the benefits bargained for in exchange for the patentee's monopoly rights. Crist has criticized Canadian "promise" case law for invalidating pharmaceutical patents for lack of utility despite the fact that the medicines at issue were com - mercially successful. That argument overlooks the fact that utility cannot be based on mere speculation even if it turns out to be successful. For patents that rely upon sound prediction, the utility analysis asks whether the patent specification as filed supports the inventor's pre - diction, not whether the invention ultimately achieves commercial success. The real controversy around the "promise doctrine" is how the courts are assessing what, if any, promises are given in the specification. In some of the cases that have led to invalidity, the courts have taken statements from an applicant's own disclosure to make inferences about a heightened level of utility. In other cases, the courts have found that the statements in the disclosure are mere goals or objectives and not promises. It is against this construed level of utility that the question of sound prediction is then determined. Patents for drugs such as Eli Lilly's Zyprexa (olan - The promise of the invention Is Canadian patent law unfair? Daniel R. Bereskin and Laura MacDonald are partners with Bereskin & Parr LLP.

• Cover
• _GoBack