46 S E P T E M B E R 2 0 1 7 w w w . C A N A D I A N L a w y e r m a g . c o m
anada has been considered
an outlier by many in terms
of its so-called promise
doctrine, with one study,
released last fall, attribut-
ing lowered levels of R&D
investment in Canada's
innovation ecosystem to
our country's unique judi-
cial "promise doctrine."
But the Supreme Court of Canada
found this doctrine "unsound" in its
decision in AstraZeneca Canada Inc.
et al. v. Apotex Inc. et al., released in
June, which IP lawyers say brings Can-
ada more in line with other industrial-
ized nations. That decision — as well
as the record-breaking award in Nova
Chemicals Corporation v. Dow Chemical
Company, et al. by the Federal Court
in February, and even the Supreme
Court's June judgement in Google Inc. v.
Equustek Solutions Inc., which indirect-
ly affirmed the respondent's intellectual
property rights by upholding a world-
wide interlocutory injunction against
Google — may only strengthen Can-
ada's position as a favourable jurisdic-
tion for patent applications.
The SCC decision in AstraZeneca
"reaffirms that Canada has a strong pat-
ent system, and as a jurisdiction it can
be attractive in terms of IP rights: both
law and remedies," says Steven Garland,
an intellectual property litigator and a
patent and trademark agent with Smart
& Biggar/Fetherstonhaugh in Ottawa.
Before the Supreme Court's judgment
in the case, which effectively struck
down the promise doctrine, "many
people thought Canada was an outlier"
in its unique "promise doctrine."
The promise doctrine was developed
through the Federal Courts' jurispru-
dence; under it, a judge reviewed a
patent as a whole to identify any "prom-
ises" made in it, then assessed whether
those promises had been met in order
to satisfy the utility requirement of
the patent under the Patent Act. If any
single "promise" was determined by the
judge not to have been met, the entire
patent could be invalidated.
Garland says the Supreme Court's
decision was valuable in providing
guidance on the relevance of the prom-
ise doctrine and "brought Canada back
in line [with other jurisdictions] in
respect to the utility requirement of
patents."
With NAFTA negotiations having
begun in August, the SCC decision in
AstraZeneca is particularly important,
says Bradley White, who chairs the
National Intellectual Property Depart-
ment for Osler Hoskin & Harcourt LLP
L E G A L R E P O RT \ I N T E L L E C T U A L P R O P E RT Y
GARY
NEILL
Canada as a
patent outlier
Canada's reputation as unfriendly to innovators may be changing
By Elizabeth Raymer
C
